Ex Parte George

Patent Trial and Appeal Board

Dec 26, 2017

13709516 (P.T.A.B. Dec. 26, 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.
13/709,516 12/10/2012 Ronald A. George 839.201US 8564
90187 7590 12/27/2017
Lewis Kohn & Walker LLP
15030 Avenue of Science
Suite 201
San Diego, CA 92128
EXAMINER
AVILA, STEPHEN P
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
12/27/2017 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 RONALD A. GEORGE
____________________

Appeal 2017-002584
Application 13/709,5161
Technology Center 3600
____________________

Before THU A. DANG, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–14, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part. Pursuant to 37 C.F.R. § 41.50(b), however, we
enter new grounds of rejection under pre-AIA 35 U.S.C. § 103(a).

1 According to Appellant, the real party in interest is Teledyne Instruments,
Inc. App. Br. 3.

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INVENTION
Appellant’s invention relates to a trimaran having outriggers with
propulsors. Abstract. Claim 1 reads as follows:
1. An improved trimaran of a type having a central
hull, a starboard outrigger, a port outrigger, a starboard crossbar
for attaching the starboard outrigger laterally to the starboard of
the central hull, and a port crossbar for attaching the port
outrigger laterally to the port of the central hull, wherein the
improvement comprises:
a starboard propulsor attached to the starboard outrigger
for propelling the trimaran;
a port propulsor attached to the port outrigger for
propelling the trimaran; and
a motor controller connected to both the starboard and
port propulsors for controlling the combined propulsion of the
starboard and port propulsors for controlling both the speed and
direction of the trimaran by tank steering.
REJECTIONS
Claims 1–6, 8, 9, 13, and 14 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Riggs (US 8,123,577 B2; issued Feb. 28, 2012).
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Riggs and Connor (US 5,277,142;
issued Jan. 11, 1994).
Claims 10 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Riggs and Trepagnier et al. (US
2007/0219720 A1; published Sept. 20, 2007) (“Trepagnier”).
Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Riggs and George (US 2006/0191458
A1; published Aug. 31, 2006).
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ANALYSIS
Rejection of Claims 1–6, 9, 13, and 14 under 35 U.S.C. § 102(b)
We have reviewed the rejections of claims 1–6, 8, 9, 13, and 14 in
light of Appellant’s arguments that the Examiner erred. We have considered
in this decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant’s arguments for claims 1–6, 9, 13, and 14 are not persuasive
of error. We agree with and adopt as our own the Examiner’s findings of
facts and conclusions related to claims 1–6, 9, 13, and 14 as set forth in the
Answer (Ans. 4–5) and in the Action (Final Act. 2) from which this appeal
was taken. We provide the following explanation for emphasis.
Appellant argues the Examiner erred in rejecting independent claim 1
as anticipated by Riggs because Riggs does not disclose “a starboard
outrigger” and “a port outrigger.” App. Br. 11–12. Appellant argues
Riggs’s outer hulls 110 are not outriggers because Riggs does not describe
the outer hulls 110 in Figures 55A and B as “outriggers.” Id. at 17.
Appellant further argues “Riggs does not ascribe an outrigger function to the
outer hulls 110 illustrated in Figures 55A [and] B, i.e., Riggs does not assert
that outer hulls 110 stabilize the central hull by their buoyancy,” as the
definition of “outrigger” in Appellant’s Specification requires. Id. (citing
Spec. 13–14). Appellant also argues Riggs “teaches away” from the recited
outriggers. Id. at 13.
Appellant’s arguments are not persuasive of error. The Examiner
does not find, nor is the Examiner required to demonstrate, the identical text
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of rejected claim 1 appears in the cited reference. In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). Moreover, Appellant has not persuasively rebutted the
Examiner’s finding that the outer hulls 110 in Riggs disclose “outriggers” as
defined in the Specification because “if the central hull of Riggs twists
clockwise in the water, the left outrigger with be pushed deeper into the
water which will then cause a righting moment about the central hull to
stabilize the trimaran and return the trimaran to a stable condition in the
water.” See Ans. 4. Appellant’s “teaching away” argument fails because
Appellant has not identified where Riggs actually criticizes, discredits, or
otherwise discourages “a starboard outrigger” and “a port outrigger.” See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant next contends Riggs does not disclose the “starboard
crossbar” and “port crossbar” recited in claim 1. App. Br. 21. Appellant
argues that element 120 of Riggs Figure 55A is a truss, not a crossbar. Id.
at 22. Appellant argues an artisan of ordinary skill would understand from
the Specification that the starboard crossbar 8 of Figure 1 is a horizontal bar
that crosses from the central hull to the starboard outrigger for attaching the
starboard outrigger to the central hull, and that the port crossbar 10 of
Figure 1 is a horizontal bar that crosses from the central hull to the port
outrigger, for attaching the port the outrigger to the central hull. Id. at 26.
Appellant’s arguments are not persuasive. “In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
Appellant has not persuasively rebutted the Examiner’s finding that “the
bottom most member of [assembly] 120” in Riggs Figure 55A “is clearly a
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crossbar.” See Ans. 5. We agree with the Examiner that “the claims do not
include any language specifying a difference such as having no vertical
members or being in a single unitary piece.” See id.
Appellant next contends Riggs does not disclose a motor controller for
controlling a trimaran by “tank steering,” as claim 1 requires. App. Br. 28.
Appellant argues that, because vehicle 100 in Riggs Figure 4 is a catamaran,
not a trimaran, “Riggs discloses neither differential steering nor tank steering
for a trimaran.” Id. at 30. Appellant further argues Riggs discloses thrust
displacement steering, which is not “tank steering.” Appellant also argues
that Riggs teaches away from tank steering for a trimaran because Riggs
discloses that thrust displacement steering is superior to differential steering.
Id. at 31 (citing Riggs 8:57–58).
We are not persuaded by Appellant’s arguments. The Specification
defines “tank steering” as “any type of steering employing a differential
steering mechanism wherein propulsors are made to exert different
propulsion forces or even propulsion forces of opposite directions to bring
about a change of course, speed, or direction.” Spec. 14. Appellant has not
persuasively rebutted the Examiner’s finding that Riggs discloses
differential steering by controlling the combined propulsion of the starboard
and port propulsors for controlling both speed and direction by differential
tank steering. Ans. 4–5 (citing Riggs 8 (last paragraph)). Appellant’s
“teaching away” argument also fails because Appellant has not identified
where Riggs actually criticizes, discredits, or otherwise discourages “tank
steering,” as recited in claim 1. See Fulton, 391 F.3d at 1201.
For these reasons, we are not persuaded that the Examiner erred in
finding that Riggs discloses the disputed limitations of representative
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claim 1 and grouped claims 3, 9, 13, and 14. See App. Br. 10 (Claim
Groups).
Turning to dependent claim 2, Appellant contends Riggs does not
disclose the limitation “the trimaran lacking a common deck or platform
simultaneously overlaying, at least in part, the central hull and both the port
and starboard outriggers.” Id. at 34. Appellant argues that “[a] person of
ordinary skill in the art would understand that the lack of either a gap or
double thickness line in Fig[.] 55B to represent the area where deck (130)
and outer hull (110) meet, indicates that deck (130) is superimposed upon
outer hull (110), i.e., deck (130) overlaps outer hull (110).” Id. at 35
(emphases omitted).
Appellant’s arguments are not convincing of error because Appellant
has not persuasively rebutted the Examiner’s finding that deck 130 in Riggs
Figure 55B does not overlie the outer hulls. See Final Act. 2. Appellant
merely sets forth a conclusory contention involving drawing conventions
without the support of persuasive arguments or evidence. For these reasons,
we are not persuaded the Examiner erred in finding Riggs discloses the
disputed limitation of claim 2.
With regard to dependent claim 4, Appellant contends Riggs does not
disclose the limitation “the central hull, port outrigger, and starboard
outrigger each having hull conformations and buoyancy, and weight
distribution for wave-piercing.” App. Br. 36. Appellant argues “[t]he
Specification of the present application discloses that a wave piercing hull
must maintain its buoyancy when the hull is submerged.” Id. (citing Spec.
9:27–29). Appellant also argues that the presence of apertures 114 would
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cause the outer hull in Riggs “to have diminished buoyancy when the vessel
is submerged.” Id. at 36–37.
Appellant’s arguments are not persuasive because they are based upon
limitations not found in the claim. Appellant has not persuaded us that the
disputed limitation should be interpreted to require that the buoyancy be
maintained when the hull is submerged, as Appellant contends. For these
reasons, we are not persuaded the Examiner erred in finding Riggs discloses
the disputed limitation of claim 4.
Regarding dependent claims 5 and 6, Appellant makes the same
arguments as Appellant made for claims 2 and 4, discussed above. App.
Br. 38. For at least the reasons given above, we find Appellant’s arguments
unpersuasive with regard to claims 5 and 6.
Appellant further contends with regard to claims 5 and 6 that an
artisan of ordinary skill “would understand that the topside deck (130)
disclosed by Riggs would not in any practical sense be considered
‘submersible during wave-piercing.’” Id. Appellant’s contention is based
on Riggs’s deck 130 being a common deck, a premise with which we
disagree for the reasons discussed above for claim 2. Thus, we are similarly
not persuaded the Examiner erred in finding Riggs discloses the disputed
limitation of claims 5 and 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claims 1–6, 9, 13, and 14.
Rejection of Claim 8 under 35 U.S.C. § 102(b)
Claim 8 depends from independent claim 1 and further recites “said
starboard and port propulsors both being inboard.” App. Br. 48 (Claims
App’x). We agree with Appellant that the Examiner has not sufficiently
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shown Riggs discloses inboard propulsors. See id. at 39. The Examiner
found the propulsors in Riggs “can be in or out of the hulls.” Final Act. 2.
The Examiner offered no further explanation in response to Appellant’s
argument that Riggs discloses extended or retracted propulsors, and an
artisan of ordinary skill would understand that a retracted propulsor is not an
inboard propulsor. See App. Br. 39; Ans. 4–6. We agree with Appellant
that an ordinarily skilled artisan would not understand the retracted
propulsor in Riggs to be “inboard,” as claim 8 requires.2
For these reasons, we do not sustain the Examiner’s 35 U.S.C.
§ 102(b) rejection of dependent claim 8. Below, however, we enter a new
ground of rejection for claim 8 under 35 U.S.C. § 103(a).
Rejections of Claims 7 and 12 under 35 U.S.C. § 103(a)
Appellant contends the Examiner erred in rejecting dependent claim 7
as obvious over the combination of Riggs and Connor. App. Br. 40.
Appellant argues Connor is directed to a catamaran, and “[t]rimarans and
catamarans are different arts.” Id. at 41. Appellant also argues “the purpose
of the retractable arms on Connor’s catamaran and the purpose of the
foldable crossbars of the trimaran of the present application are entirely
different.” Id.
Appellant’s arguments are not persuasive of error. It is not necessary
for the prior art to serve the same purpose as that disclosed in Appellant’s
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016

2 A dictionary definition of “inboard” is “within the hull of a vessel.” Am.
Heritage Dictionary (5th ed. 2012). Another similar definition of “inboard”
is “inside the line of a ship's bulwarks or hull.” See www.merriam-
webster.com/dictionary/inboard.
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(CCPA 1972); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) (“[N]either the particular motivation nor the avowed purpose of the
[Appellant’s] controls” in an obviousness analysis.).
Moreover, in merely noting catamarans and trimarans are different
arts (App. Br. 41), Appellant has not persuaded us that Connor is not
analogous art under the two separate tests that define the scope of analogous
art: “(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004).
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 7, and we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 7.
Turning to dependent claim 12, Appellant contends the Examiner
erred in rejecting claim 12 as obvious over the combination of Riggs and
George. App. Br. 44. Appellant argues “Riggs discloses no suggestion that
his vessel might be employable as an instrument platform” and “[a]n
instrument well within a vessel that was not adapted for use as an instrument
platform would lack utility.” Id. Appellant further argues George teaches
away from any combination with the vessel disclosed by Riggs. Id. (citing
George ¶ 19).
We are not persuaded the Examiner erred. The Examiner concluded it
“would have been obvious to a person of ordinary skill in the art at the time
the invention was made to form the device of Riggs with an instrument well
for improved protection of sensitive electronics as taught by George.”
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Ans. 5–6. The Examiner further explained that the combination combines
known features to achieve predictable results. Id. at 6. The Examiner
provided persuasive articulated reasoning with rational underpinning for an
artisan of ordinary skill to have modified Riggs with the instrument well of
George. Appellant has not persuasively shown the Examiner’s reasoning
lacks rational underpinning or is otherwise unreasonable.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 12, and we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 12.
Rejections of Claims 10 and 11 under 35 U.S.C. § 103(a)
Claim 10 depends from claim 1 and further recites “remote control
electronics connected to the motor controller for controlling the trimaran
remotely in an unmanned fashion.” App. Br. 48 (Claims App’x). Appellant
contends the Examiner erred in rejecting claim 10 because Trepagnier
teaches autonomous navigation, not remote navigation. Id. at 42–43.
Appellant further argues Trepagnier “teaches away from [c]laim 10.” Id.
at 43.
We agree with Appellant that the Examiner has not clearly shown
where Trepagnier teaches or suggests “remote control electronics.” The
Examiner pointed to paragraph 5 of Trepagnier, which teaches or suggests
that loss of human life could be avoided if military supply trucks were
unmanned. Final Act. 3. The Examiner also pointed to claim 43 of
Trepagnier, which teaches watercraft. Id. The Examiner, however, has not
identified a teaching or suggestion in Trepagnier of “remote control for
unmanned operation,” referred to in the Answer. See Ans. 5.
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For these reasons, we are persuaded the Examiner erred, and we do
not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 10. Nor do
we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 11 for
similar reasons. See App. Br. 42–43; Ans. 5. Below, however, we enter a
new ground of rejection for claims 10 and 11 under 35 U.S.C. § 103(a).

NEW GROUNDS OF REJECTION
We adopt the Examiner’s findings regarding Riggs (Final Act. 2;
Ans. 4). Under the provisions of 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection:
(1) Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Riggs and Ruiz.
Claim 8 depends from claim 1 and further requires “said starboard and
port propulsors both being inboard.” App. Br. 48 (Claims App’x). In the
Specification, Appellant acknowledges the prior art discloses “a pontoon
type catamaran having inboard propulsion within each pontoon.” Spec.
2:17–18 (citing Ruiz (US 2006/0228959 A1; published Oct. 12, 2006)). In
particular, we find Ruiz teaches or suggests a pontoon boat with a jet
propulsion unit mounted within the pontoon. Ruiz ¶ 7. We also find Ruiz
contrasts such pontoon boat with one equipped with an outboard motor. Id.
¶¶ 6, 9.
We conclude it would have been obvious to one of ordinary skill in
the art to have modified the propulsors taught in Riggs to be mounted within
the outward hulls, as taught in Ruiz, for use in shallow waters, rapids, weed
infested waters, or areas with submerged rocks or other objects that can
damage the projecting propeller shaft of the outboard motor, as suggested in
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Ruiz. Id. ¶ 6. Moreover, we conclude that combining the teachings of Riggs
and Ruiz in this manner would have been obvious because it amounts to the
combination of familiar elements according to known methods to yield
predictable results. See KSR, 550 U.S. at 416.
(2) Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Riggs.
Claim 10 depends from claim 1 and further recites “remote control
electronics connected to the motor controller for controlling the trimaran
remotely in an unmanned fashion.” App. Br. 48 (Claims App’x). We find
Riggs teaches or suggests an aquatic vehicle that may be operated remotely
by an operator at a control center. Riggs 6:63–7:23. We find Riggs further
teaches or suggests a control component that contains onboard processing
and control hardware and logic, a sensor tower, and a communications mast
to permit remote control of the vehicle. Id. at 7:62–66. We conclude one of
ordinary skill in the art would have found the recited limitation in claim 10
obvious in light of the cited teachings and suggestion in Riggs of remote
control of aquatic vehicles.
Claim 11 depends from claim 10 and requires “said remote control
electronics executing pre-planned path navigation for controlling the speed
and direction of the trimaran for survey purposes.” App. Br. 48. We find
Riggs teaches or suggests pre-planned path navigation for controlling the
speed and direction of a vehicle (i.e., navigating based on a predetermined
course). Riggs 7:2–13. We find Riggs teaches or suggests a remote operator
that controls such vehicle. Id. at 7:9–12. We also find Riggs teaches sensors
to collect real-time data on the environment surrounding the vehicle for
further analysis and processing, thus, teaching or suggesting that remote
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operation is “for survey purposes.” Id. at 7:13–23. We conclude one of
ordinary skill in the art would have found the recited limitation in claim 11
obvious in light of the cited teachings and suggestion in Riggs of sensors
used to control the speed and direction of vehicles, including aquatic
vehicles.
DECISION
We affirm the Examiner’s decision rejecting claims 1–7, 9,
and 12–14.
We reverse the Examiner’s decision rejecting claims 8, 10, and 11, but
enter new grounds of rejection for these claims under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)