Ex Parte Gizara

Patent Trial and Appeal Board

Feb 26, 2013

11942546 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW ROMAN GIZARA
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Appeal 2011-002258
Application 11/942,546
Technology Center 3600
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Before: GAY ANN SPAHN, WILLIAM V. SAINDON, and
REMY J. VANOPHEM, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002258
Application 11/942,546

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-6, 8-14, and 21-24. We have jurisdiction under
35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1 A sailing vessel including a generator which
generates electricity in response to moving fluids,
the sailing vessel comprising:
a hull configured to provide flotation;
a mast coupled to said hull;
one or more sails configured to be coupled
to said mast, the sails configured to harness wind
forces to move the hull in a desired direction; and
a hydrofoil coupled to said hull, the
hydrofoil configured to reduce drag on the hull,
wherein the hydrofoil houses a turbine for
extracting energy from moving fluids.

References
The Examiner relies upon the following prior art references:
Jones
Harloff
Yang
Lehoczky
Morales
Mathias
Salls
Bourn
US 4,027,614
US 4,279,569
US 5,476,293
US 6,104,097
US 6,192,821 B1
US 6,375,523 B1
US 6,472,768 B1
US 6,675,735 B1
Jun. 7, 1977
Jul. 21, 1981
Dec. 19, 1995
Aug. 15, 2000
Feb. 27, 2001
Apr. 23, 2002
Oct. 29, 2002
Jan. 13, 2004
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Application 11/942,546

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Rejections
The following obviousness rejections under 35 U.S.C. § 103(a) are on
appeal:
I. Claims 1, 3, 4, 8, and 21 over Jones, Morales, and Salls. Ans. 4.
II. Claim 2 over Jones, Morales, Salls, and Harloff. Ans. 4.
III. Claim 5 over Jones, Morales, Salls, and Yang. Ans. 4-5.
IV. Claim 6 over Jones, Morales, Salls, and Bourn. Ans. 5.
V. Claims 9-11 over Jones, Morales, Salls, and Lehoczky. Ans. 5.
VI. Claims 12-14 and 22-24 over Jones, Morales, Salls, and Mathias.
Ans. 5-6.

SUMMARY OF DECISION
We AFFIRM.

OPINION
The Examiner found that Jones describes a sailboat having a hull,
mast, sail, and foils for drag reduction. Ans. 4. The Examiner then found
that Morales describes a boat having a turbine to generate electricity. Id.
Lastly, the Examiner found that Salls describes a generator inside a
hydrofoil, for reduced drag. Id. The Examiner concluded that it would have
been obvious to modify Jones to include a generator to provide an energy
source, as taught in Morales, and specifically to house a generator in the
hydrofoil, as taught in Salls. Id.
Appellant does not challenge the propriety of the Examiner’s findings
and conclusions with respect to Jones and Morales. Instead, Appellant
argues: (1) Salls does not describe a generator in a hydrofoil (App. Br. 13-
15); (2) Salls teaches away from combination with devices such as those of
Jones and Morales (App. Br. 15-16); and (3) combining the Salls teachings
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Application 11/942,546

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with those of Jones and Morales would render the prior art unsatisfactory for
its intended purpose (App. Br. 16). We address each argument in turn.1
Regarding argument 1, we agree with the Examiner that Salls
discloses a generator in a hydrofoil. As the Examiner notes on page 6 of the
Answer, Salls states that the hull surrounding the generator “provides a
surface which acts like a hydrofoil.” Salls, col. 1, ll. 56-58; see also Salls,
col. 3, ll. 42-43. The hull (and turbine housing) directs water toward the
turbine vanes. Salls, col. 3, ll. 52-58. Directing water is the key to being a
hydrofoil.2 Appellant’s argument that a structure must provide lift to be a
hydrofoil is not persuasive. See App. Br. 15. Appellant does not provide
any compelling reason as to why the claim should be interpreted using this
more narrow meaning, given that the plain meaning is understood to be
broader, as evidenced by a dictionary definition and the explicit teaching of
Salls.
In addition, we note that the Examiner’s proposed combination is to
modify Jones’s hydrofoil to include a turbine inside of it. Ans. 4. Thus, the
Salls hydrofoil is not to be bodily incorporated and replace Jones’s
hydrofoil. See, e.g., In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)

1 Appellant does not set forth any further arguments in the brief. Appellant
notes that the rejection of independent claims 8 and 21 are improper for
those reasons claim 1 is allegedly improper. App. Br. 17. Appellant notes
that the rejections of the dependent claims are improper because their
corresponding independent claims are allowable. App. Br. 18. Accordingly,
the outcome of the issues on appeal for claim 1 controls the outcome of the
appeal for all claims.
2 Hydrofoil: “a flat or curved plane surface designed to obtain reaction upon
its surfaces from the water through which it moves.” WEBSTER’S THIRD
NEW INTERNATIONAL DICTIONARY (1993) (retrieved from
lionreference.chadwyck.com).
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(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). The Examiner is not proposing to
unnecessarily destroy the beneficial hydrofoil features of Jones (which
include providing lift); rather, the Examiner is proposing to add the
beneficial features of Salls’s hydrofoil (i.e., a hydrofoil having a turbine
inside) to seek the features it provides. Ans. 4, 7 (“Salls is simply applied as
providing a known teaching of a generator in a hydrofoil” (emphasis
added)); see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984) (one of ordinary skill is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment). Accordingly, even if Appellant was correct and that
Salls’s device was not a hydrofoil (as Appellant understands the term), such
an argument is not responsive to the Examiner’s proposed combination, in
which Jones describes such a feature.
Regarding argument 2, Appellant has not pointed to any disclosure in
Salls that criticizes, discredits, or otherwise discourages the solution claimed
in order to teach away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Salls discloses a hull shape that does not provide lift because that
particular feature is beneficial in the particular embodiment Salls discusses.
Appellant does not link the ability of the hull to collect and speed up water
to feed to a turbine with the hull being shaped to not provide lift; nor is such
a link apparent. Likewise, that Salls utilizes an anchor to hold the hull in
one location relative to the floor of a body of water has no apparent link to
the ability of the hull to collect water for the turbine. As the Examiner
points out, Salls operates by using the kinetic energy of moving water. Ans.
6. Whether the water moves or the device moves seems irrelevant, as energy
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is generated using the same mode of operation either way. Appellant’s
arguments are merely arguing the references in isolation. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references”).
Regarding argument 3, Appellant’s arguments are unpersuasive for
the same reasons those in argument 2 are unpersuasive. Appellant is arguing
the references in isolation.
In view of the above, we are not apprised of error in the Examiner’s
rejection of claim 1. We sustain all of the Examiner’s rejections. See n. 1.

DECISION
We AFFIRM the Examiner’s decision regarding claims 1-6, 8-14, and
21-24.
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)(iv).

AFFIRMED

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