Ex Parte Haller

Board of Patent Appeals and Interferences

Oct 7, 2011

11824929 (B.P.A.I. Oct. 7, 2011)

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.
11/824,929 07/03/2007 Clay Haller 724.05 4468
85444 7590 10/07/2011
Bay Area Technolgy Law Group PC
4089 Emery Street
Emeryville, CA 94608
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
10/07/2011 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 CLAY HALLER
____________

Appeal 2009-014431
Application 11/824,929
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014431
Application 11/824,929

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STATEMENT OF THE CASE
Clay Haller (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1-4 and 6 under 35 U.S.C. § 103(a) as
being unpatentable over Day (US 4,356; issued Jan. 15, 1846) and Hart
(US 4,807,555; issued Feb. 28, 1989) and claim 5 under 35 U.S.C. § 103(a)
as being unpatentable over Day, Hart, and McCrory (US 4,251,893; issued
Feb. 24, 1981). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s claimed invention relates to “a spine for stiffening an
inflatable kayak.” Spec. 3, l. 3. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. In a selectively inflatable kayak comprising at least one
elongated pneumatically inflatable peripheral tube which when
inflated, defines a passenger compartment and relatively narrow
bow and stern sections and a flexible cover extending between
and at least partially encasing said at least one elongated
pneumatically inflatable peripheral tube to provide a floor for
said kayak, the improvement comprising a spine for stiffening
said inflatable kayak, said spine comprising a relatively rigid
longitudinal member and end caps fitted to both ends thereof,
said longitudinal member being sized to be removably inserted
within said flexible cover so that when installed, said end caps
are positioned proximate the bow and stern sections of said
inflatable kayak.
ISSUE
The Examiner determined that Day discloses a selectively inflatable
kayak as called for in claim 1 except that Day discloses using boards along
Appeal 2009-014431
Application 11/824,929

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the bottom of the kayak instead of a spine for stiffening the inflatable kayak.
Ans. 3. The Examiner determined that it would have been obvious to one of
ordinary skill in the art “to replace the boards (h) of Day with a spine for
stiffening said inflatable kayak of Day similar to the spine shown in figure 2
of Hart.” Ans. 4 (citing members 41a and 41b of framework 12 of Hart).
The Examiner stated that “[m]otivation to make this change is found in the
need for changing the boards (h) of Day with a rigidifier that is easier to
use.” Id.
Appellant argues that there is no motivation for one of ordinary skill
in the art to replace the floor of Day’s boat with Hart’s framework 12.
Reply Br. 2.
The issue presented by this appeal is whether the Examiner has
articulated a reason based upon rational underpinnings to explain why one of
ordinary skill in the art would have been led to replace the boards in Day’s
boat with Hart’s framework 12.
ANALYSIS
Day discloses a boat comprised of air cylinders (a) that are fit together
to form the outer frame of the boat. Day 1, ll. 43-47; fig. 3. Day discloses
that sheets of India rubber cloth are carried around and over the cylinders to
form the bottom (d) of the boat. Day 1, ll. 63-66. “Loops (g) may be
attached to that part of the cloth which passes over the cylinders to receive
rods of wood to give stiffness to the whole structure.” Day 1, ll. 72-75;
figs. 3, 4. “If desired, boards (h) may be placed in the bottom to prevent the
weight of persons in the boat from protruding that portion of the bottom on
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Application 11/824,929

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which the weight rests; but this is only necessary to prevent an increased
resistance of the water to the motion of the boat.” Day 1, ll. 75-81; fig. 4.
Hart discloses a “rigidifier for an inflatable boat.” Hart, col. 1, l. 30.
“[R]igidifier 1 comprises a floorboard member 11 and framework generally
indicated at 12.” Hart, col. 2, ll. 34-36; figs 2-4. Floorboard member 11
comprises a fabric sheath 29 and parallel, rigid wood ribs 31 extending side-
to-side received in pockets 33 of sheath 29. Hart, col. 2, ll. 43-55; fig. 3.
The pockets 33 are formed so as to enable the floorboard member 11 to be
rolled up, so that the floorboard member 11 is rigid in the side-to-side
direction and collapsible in the fore-and-aft direction. Hart, col. 2, ll. 56-65;
fig. 5. Framework 12 extends along floorboard member 11 in the fore-and-
aft direction to rigidify the floorboard member. Hart, col. 3, ll. 5-8; fig. 2.
Day’s boat includes wood rods placed through loops (g) about the
perimeter of the boat to provide stiffness to the boat, and thus we see no
reason why one of ordinary skill would have been led by the teachings of
Hart to replace Day’s boards (h) with the framework 12 of Hart’s
rigidifier 1. The Examiner’s stated motivation for the proposed combination
is to have a rigidifier in Day that is easier to use. Ans. 4. Hart’s rigidifier,
however, is comprised of the combination of floorboard member 11 and
framework 12. This combination appears to be more complicated and
cumbersome to use than the boards placed in the bottom of Day’s boat.
Thus, the Examiner’s stated reason to combine does not appear to be based
on a rational underpinning. As such, we cannot sustain the rejection of
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Application 11/824,929

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claim 1, or its dependent claims 2-4 and 6, under 35 U.S.C. § 103(a) as
being unpatentable over Day and Hart.
The rejection of claim 5 relies on the same proposed combination of
Day and Hart that we find unsustainable in the rejection of claim 1, from
which claim 5 depends. The Examiner relies on McCrory only for the
teaching of a longitudinal member made of sections capable of telescoping
within one another. Ans. 5. As such, we cannot sustain the rejection of
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Day, Hart, and
McCrory.
CONCLUSION
The Examiner failed to articulate a reason based upon rational
underpinnings to explain why one of ordinary skill in the art would have
been led to replace the boards in Day’s boat with Hart’s framework.
DECISION
The decision of the Examiner to reject claims 1-6 is REVERSED.

REVERSED

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