Ex Parte Gibbs

Patent Trial and Appeal Board

Aug 2, 2018

12674895 (P.T.A.B. Aug. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/674,895 04/19/2011
24201 7590 08/06/2018
FULWIDER PATTON LLP
HOW ARD HUGHES CENTER
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Alan Timothy Gibbs
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BWT2 83599 (D131)) 1235
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/06/2018 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):
docketla@fulpat.com
eOfficeAction@fulpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN TIMOTHY GIBBS
Appeal 2016-008731 1
Application 12/674,895 2
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Mar. 29,
2016), the Reply Brief ("Reply Br.," filed Sept. 21, 2016), the Examiner's
Answer ("Ans.," mailed July 21, 2016), and the Final Office Action ("Final
Act.," mailed Apr. 29, 2015).
2 According to Appellant, the real party in interest is Gibbs Technologies
Ltd. Appeal Br. 2.
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Application 12/674,895
BACKGROUND
According to Appellant, "the invention relates to an amphibian,
capable of travelling on water and on land." Spec. 1, 11. 5---6.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. An amphibian capable of travel on land and on water,
provided with a body and a planing hull, and two front road
wheels and a single rear road wheel mounted on retractable
suspension which may be protracted for road use, or retracted for
use on water;
and further comprising ride-on seating for at least one rider
to sit astride the body; and
wherein marine propulsion is provided by at least two jet
drives.
Appeal Br., Exhibit 1.
REJECTIONS
1. The Examiner rejects claims 1, 3-5, 7, 10, 11, 13-15, and 17 under
35 U.S.C. § I03(a) as unpatentable over Buchanan3 in view ofMaguire. 4
2. The Examiner rejects claims 2--4 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Buchanan in view of Maguire and Gibbs. 5
3. The Examiner rejects claims 6, 8, and 9 under 35 U.S.C. § I03(a) as
unpatentable over Buchanan in view of Maguire and Gong. 6
3 Buchanan, GB 2254831 A, pub. Oct. 21, 1992.
4 Maguire, US 6,505,694 B2, iss. Jan. 14, 2003.
5 Gibbs et al., US 7,207,851 Bl, iss. Apr. 24, 2007.
6 Gong, US 6,540,569 Bl, iss. Apr. 1, 2003.
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4. The Examiner rejects claim 16 under 35 U.S.C. § I03(a) as unpatentable
over Buchanan in view of Maguire and Rupenian. 7
5. The Examiner rejects claims 1, 5-11, 13-15, and 17 under 35 U.S.C.
§ I03(a) as unpatentable over Gong in view of Maguire.
6. The Examiner rejects claims 2--4 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Gong in view of Maguire and Gibbs.
7. The Examiner rejects claim 16 under 35 U.S.C. § I03(a) as unpatentable
over Gong in view of Maguire and Rupenian.
DISCUSSION
Claim 1
As an initial matter, Appellant discusses the rejection of claims 1, 3-5,
7, 10, 11, 13-15, and 17 over Buchanan in view of Maguire and the rejection
of claims 1, 5-11, 13-15, and 17 over Gong in view of Maguire together,
discusses only claim 1 with respect to both rejections, and relies on the same
arguments for both rejections. See Appeal Br. 6-14. Accordingly, we
discuss only claim 1 below. Claims 3-5, 7, 10, 11, 13-15 and 17 fall with
claim 1 with respect to the rejection over Buchanan and Maguire, and claims
5-11, 13-15, and 17 fall with claim 1 with respect to the rejection over
Gong and Maguire.
With respect to claim 1, the Examiner relies on either Buchanan or
Gong as disclosing an amphibious vehicle as claimed, except that each of
Buchanan and Gong teaches a device including only one front road wheel
instead of the two required by the claim. See Final Act. 3, 7. With respect
7 Rupenian, FR 2342862 Al, pub. Sept. 30, 1977.
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to this requirement, the Examiner relies on Maguire. Id. Specifically, the
Examiner finds that
Maguire discloses an amphibious vehicle with two retractable
(and drivable) front road wheels [58] and a single rear endless
track that is also retractable. The front wheels [58] provide
directional stability and also provide additional flotation for the
vehicle, particularly in deep snow (see col. 3, lines 36-39). In
water, flotation is also facilitated by (wide) body [12]; see col. 3
lines 4 7--48 (body [ 12] is wider as compared to the body of the
Buchanan [ or Gong] vehicle with only one front wheel which
facilitates buoyancy).
Id. at 3--4, 7. The Examiner concludes that it would have been obvious to
incorporate two front wheels into either Buchanan's or Gong's vehicle
because "such a configuration would enhance directional stability for the
vehicle for use on land, improve flotation on water, and also provide an
improved use of the vehicle on snow ( as expected in comparison to a vehicle
with just one front wheel)." Id. at 4, 7-8. Additionally, the Examiner
indicates that one of ordinary skill in the art would recognize that Maguire's
use of two front wheels provides for greater lateral stability. Id. at 10
As discussed below, we are not persuaded of reversible error with
respect to the rejections of claim 1.
Appellant first argues that the retraction arrangement for the single
front wheel in either Buchanan or Gong "is not compatible in any way with
a vehicle having two front wheels, and so a person having ordinary skill in
the art is given no motivation whatsoever in even looking to adapt the
amphibious vehicle shown in the Buchanan and Gong patents to utilize a
pair of wheels provided at the front of the vehicle." Appeal Br. 7-8. We are
not persuaded by this argument at least because Appellant does not
adequately explain how the different retraction mechanisms have any
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bearing on the reasoning provided in support of the proposed combination in
the rejection. To the extent Appellant is suggesting that the retraction
mechanism of Maguire may not be physically substituted for the retraction
mechanism in Buchanan or Gong, we are not persuaded by this bodily
incorporation argument. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.")
In a similar vein, Appellant also argues that both Buchanan and Gong
require retraction of the front wheel in a vertical manner, which transfers
"significant mass of the vehicle upwardly on retraction of the wheels."
Appeal Br. 8. Appellant asserts that "[t]his has a significant effect upon the
center of gravity and performance of the vehicle, both on land and on water,
and is just one further reason why the skilled person of ordinary skill in the
art would not be motivated to add a third wheel at the front of the vehicle as
taught by the Maguire patent." Id. (emphasis omitted). But again,
Appellant does not adequately explain how this affects the reasoning
provided to support the proposed combination in the rejection and implies
only that Maguire's front wheel assembly could not be physically substituted
into either Buchanan's or Gong's vehicle. This fact alone does not apprise
us of error in the rejection. We also agree with the Examiner that one of
ordinary skill in the art would recognize such changes in the center of
gravity and weight of the device when replacing one front wheel with a two
front wheel design. See Ans. 5---6. In particular, we agree that one of
ordinary skill in the art "would adjust weights and centers for a three wheel
vehicle assembly within the design such that performance is not rendered
ineffective." Id. at 5.
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Appellant further indicates that the addition of a second front wheel
would undermine both Buchanan's and Gong's vehicle's performance as a
motorcycle because of the differences in weights, centers of gravity, and
methods of turning of a motorcycle versus a three-wheeled vehicle. Appeal
Br. 9-10. Thus, Appellant argues that one of ordinary skill in the art "is
given no motivation whatsoever in adapting the motorcycles disclosed in the
Buchanan and Gong patent[ s] to provide a configuration having two wheels
at the front." Id. at 10. Again, Appellant's argument does not address the
reasoning provided by the Examiner. The Examiner's rejection necessarily
suggests that one of ordinary skill in the art would have recognized the
tradeoffs in altering the design of either Buchanan's or Gong's vehicle, but
the Examiner concludes that one of ordinary skill in the art would have
nonetheless found it obvious to modify these vehicles in order to gain the
advantages of directional stability and improved flotation.
Next, Appellant argues that the structure of Maguire's rear endless
track in a snowmobile body affects the use of Maguire's vehicle on water
such that Maguire's vehicle is not a planing vehicle. Appeal Br. 11.
Appellant asserts that a person of ordinary skill in the art "is given no
motivation whatsoever in even considering how the endless track of Maguire
can be accommodated in any of the teachings of the prior art, let alone how
to do so." Id. at 12. We are not persuaded by this argument because it is not
clear to us how this has any bearing on the rejection before us, which
proposes to modify Buchanan or Gong with two front wheels as taught by
Maguire. The rejection does not appear to rely on a modification of
Maguire's endless rear track.
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Furthermore, to the extent Appellant takes issue with the Examiner
finding that Maguire contemplates different body styles and is not limited to
using only a non-planing hull, we are not persuaded of reversible error. See
Appeal Br. 12-14. Even ifwe were to agree with Appellant that Maguire
only teaches a non-planing hull, we find that the Examiner's error in this
regard would be harmless with respect to the rejection of claim 1 because the
rejection does not rely on incorporating Maguire's hull design into either
Buchanan or Gong.
Finally, Appellant reiterates the arguments above in the Reply Brief
and further asserts that the resulting combination would be inoperable or
seriously compromised for both land and water usage. See Reply Br. 2-9.
We are not persuaded of error for the reasons provided above. Specifically,
Appellant's arguments continue to rely on a bodily incorporation of
Maguire's wheels into either Buchanan or Gong, do not address the
proposed reasoning provided by the Examiner, and fail to consider the fact
that a person of ordinary skill in the art would take into account the
differences in the art when modifying the vehicles as proposed.
Based on the foregoing, we sustain the rejections of claim 1 as
obvious over Buchanan in view of Maguire and over Gong in view of
Maguire. As noted above, Appellant does not raise any arguments with
respect to any other claims subject to these rejections. Thus, we also sustain
the rejection of claim 3-5, 7, 10, 11, 13-15, and 17 as obvious over
Buchanan and Maguire and the rejection of claims 5-11, 13-15, and 17 as
obvious over Gong and Maguire.
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Claims 2--4 and 12
Appellant provides separate arguments regarding the rejections of
claims 2--4 and 12 over Buchanan, Maguire, and Gibbs and over Gong,
Maguire, and Gibbs. See Appeal Br. 15-16. As discussed below, we are not
persuaded of error in these rejections.
With respect to claims 2--4 and 12, the Examiner acknowledges that
neither the combination of Buchanan and Maguire nor the combination of
Gong and Maguire teaches
that no part of the body or hull changes position when the retractable
suspension protracts or retracts in changing from land mode to marine
mode or vice versa and all road wheels are exposed to water when the
retractable suspension is retracted, and a second power source for
providing power for travel on water.
Final Act. 5, 8. The Examiner finds that Gibbs discloses these features. Id.
( citing Gibbs Figs. 1-3; col. 5, 11. 14--26). The Examiner concludes that
modifying the devices of Buchanan/Maguire and Gong/Maguire to
incorporate these features would have been obvious "in order to minimize
unnecessary components ( especially moving components), to facilitate
assembly and to improve reliability for the vehicle" and that "[t]he rejection
combines known features to achieve expected results." Final Act. 5.
Appellant argues that the Examiner does not explain how the features
of Gibbs "can possibly be incorporated" into the combined devices of
Buchanan/Maguire or Gong/Maguire. Appeal Br. 15. Appellant further
asserts that "given the size and incompatibilities of the Gibbs vehicle ...
with the Gong, Buchanan, and Maguire vehicles, it is inconceivable how one
skilled in the art would combine the various components disclosed in these
different vehicles to achieve the amphibians recited in claims 2--4 and 12
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without exercising inventive skill." Id. at 16. At best, without further
explanation, Appellant's argument amounts to an argument that the features
of Gibbs cannot be directly substituted into the combination of Buchanan
and Maguire or Gong and Maguire. As discussed above with respect to
claim 1, we are not persuaded of reversible error by such arguments here.
The Examiner has explained where the art of record teaches each of the
elements of the claims at issue and provides a reason with adequate rational
underpinnings to support the conclusion that combining the art in the manner
claimed would have been obvious. Appellant's general allegation here that
the vehicles are incompatible does not persuade us of error with respect to
the Examiner's findings or conclusion.
Based on the foregoing, we sustain the rejections of claims 2--4 and 12
over Buchanan, Maguire, and Gibbs and over Gong, Maguire, and Gibbs.
Claims 6, 8, 9, and 16
With respect to the rejections of claims 6, 8, 9, and 16, Appellant
argues that the art of record does not cure the deficiency in the rejections of
claim 1. Because we find no deficiency in the rejections of claim 1, we also
sustain the rejections of claims 6, 8, 9, and 16.
CONCLUSION
We AFFIRM the rejections of claims 1-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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