Ex Parte Hewitt et al

Patent Trial and Appeal Board

Dec 9, 2016

13071726 (P.T.A.B. Dec. 9, 2016)

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.
13/071,726 03/25/2011 Troy L. Hewitt H113.12-0009 4583
7590 12/12/2016
Peter J. Ims
WESTMAN, CHAMPLIN & KELLY, P.A.
900 Second Avenue South, Suite 1400
Minneapolis, MN 55402-3244
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
12/12/2016 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 TROY L. HEWITT and GARY D. HODAPP
Appeal 2014-008647
Application 13/071,726
Technology Center 3600
Before ANTON S. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’
rejections of claims 1—20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify the real party in interest as “Hewitt Machine &
Manufacturing, Inc.” (Appeal Br. 1.)
Appeal 2014-008647
Application 13/071,726
STATEMENT OF THE CASE
The Appellants’ invention “relates to on-board boat lift structures that
are typically attached to a bottom substantially horizontal platform of a
pontoon boat.” (Spec. 1, lines 13—14.)
Illustrative Claim
1. An onboard boat lift comprising:
a plurality of support legs, each support leg having a length;
a plurality of first mounting brackets attachable to a
substantially horizontal lower deck material of a boat,
each first mounting bracket pivotally mounting one of the
support legs, the support legs pivoting about a pivot axis
between a generally horizontal stowed position adjacent
the lower deck material of the boat on which it is
mounted, and a substantially upright support position
wherein the pivot axis is at an acute angle relative to the
substantially horizontal lower deck material; and
a plurality of power actuators, each of the plurality of power
actuators being configured for moving each support leg
of the plurality of legs between the generally horizontal
stowed position and the substantially upright support
position, each power actuator of the plurality of power
actuators having an extendable and retractable rod, a first
end of each power actuator of the plurality of power
actuators being pivotally mounted to the lower deck
material of a boat, and a second end of each power
actuator of the plurality of power actuators being
pivotally mounted to a side of one support leg of the
plurality of support legs on an exterior thereof.
References
Schlender US 2,659,555 Nov. 17, 1953
Hodapp US 5,558,034 Sept. 24, 1996
Stimson US 5,570,754 Nov. 5, 1996
Krause US 7,628,564 B2 Dec. 8, 2009
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Application 13/071,726
Rejections
I. The Examiner rejects claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Hodapp, Krause, and Schlender. (Final Action 2, 4.)
II. The Examiner rejects claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Hodapp, Stimson, and Schlender. (Final Action 4, 6.)
ANALYSIS
Claims 1 and 13 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2—12 and 14—20) depending therefrom.
(Appeal Br., Claims App.) Independent claims 1 and 13 are each directed to
a “boat lift” comprising “a plurality of support legs” and “a plurality of
power actuators” that move the support legs between “stowed” and
“support” positions. (Id.)
Independent Claim 1
Independent claim 1 recites that the support legs pivot “about a pivot
axis” that is “at an acute angle” relative to the substantially horizontal
“lower deck material of the boat.” (Appeal Br., Claims App.)
The Examiner finds that Hodapp discloses a boat lift comprising
support legs 36 that pivot between stowed and support positions. (See Final
Action 2; see also Hodapp Fig. 1.) And the Examiner determines that it
would have been obvious, in view of the teachings of Schlender, to make the
pivot axis of Hodapp’s support legs 36 “cant from the horizontal” to provide
“enhanced lateral stability.” (Final Action 3.)
The Appellants argue that Schlender relates to an airliner rather than a
boat, and thus is not analogous art. (See Appeal Br. 10-12, 15—16.) We are
not persuaded by this argument because a reference is analogous art if it “is
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Application 13/071,726
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio 381 F.3d 1320, 1325 (Fed. Cir. 2004). The
Appellants are involved with a problem pertaining to base stability (see
Spec. 4, lines 5—9); and Schlender is likewise involved with this problem
(see Schlender col. 2, lines 25—27). As such, we agree with the Examiner
that “Schlender solves a similar problem in improving lateral stability by
providing a sufficiently wide base.” (Answer 3.) Insofar as the Appellants
argue that it would not have been obvious to incorporate this improvement
into Hodapp’s boat lift (see e.g., Appeal Br. 11—12), we are not persuaded by
this argument.
Independent claim 1 additionally requires an end of each power
actuator to be “pivotally mounted to a side of one support leg of the plurality
of support legs on an exterior thereof.” (Appeal Br., Claims App.)
The Examiner finds that, in Hodapp’s boat lift, power actuators 74
move support legs 36 between stowed and support positions. (See Final
Action 3; see also Hodapp Fig. 1.) And the Examiner determines that it
would have been obvious, in view of the teachings of Kraus, to pivotally
mount Hodapp’s power actuators 74 in the claimed manner. (See Final
Action 3.) According to the Examiner, Kraus teaches an actuator pivotally
mounted to the “exposed” surface of an “open” channel member of a support
leg. (See Answer 3.)
The Appellants argue that the claim term “exterior” is not equivalent
to “exposed” (Reply Br. 4) and so Kraus does not teach pivotally mounting
an actuator as required by independent claim 1 (see Appeal Br. 8—9). We
are not persuaded by this argument because we give the claim term
“exterior” its “broadest reasonable interpretation consistent with the
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Application 13/071,726
[Specification.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364
(Fed.Cir.2004). When we do so, the exposed (i.e., outside) surfaces of an
open channel member qualify as an exterior side of a leg-like member.2 As
such, the Appellants do not persuasively challenge the Examiner’s finding
that Kraus teaches pivotally mounting an actuator to the exterior of a support
leg; and they do not adequately address why, in view of this teaching by
Kraus, it would not have been obvious to mount Hodapp’s actuators 74 in
the claimed manner. (See Reply Br. 3 4).
The Examiner additionally and alternatively determines that it would
have been obvious, in view of the teachings of Stimson, to pivotally mount
Hodapp’s power actuators 74 in the claimed manner. (See Final Action 6.)
According to the Examiner, Stimson teaches that an actuator can be
pivotally mounted, via a bracket, to the exterior side of a leg-like strut. (See
id. at 5.)
The Appellants argue that “[i]t is improper to combine a reference that
floats on water [i.e., Hodapp] with a vehicle used to pull cargo [i.e.,
Stimson].” (Appeal Br. 16.) We are not persuaded by this argument
because, as discussed above, a reference is analogous art if it “is reasonably
pertinent to the particular problem with which the inventor is involved.”
2 A dictionary definition of the word “exterior” is “the outer surface or part,
outside,” (http://www.dictionary.com/exterior, last visited December 2,
2016.) As for the Specification, it draws a distinction between the outside of
the support leg (i.e., formed by exposed surfaces) and its enclosed interior
cavity (i.e., formed by non-exposed surfaces). For example, the
Specification discusses “perforations in the exterior of the leg” that allow
invasive species “to become entrapped within the interior cavity of the leg
through the perforations” (Spec. 1, lines 25—26) and discusses the need to
avoid “openings or access to the interior of the legs” {id. at 5, line 10).
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Application 13/071,726
Bigio 381 F.3d at 1325. The Appellants are involved with movement of
support legs between stowed and support positions via a power actuator (see
Spec. 5, lines 7—17) and Stimson pertains to using a power actuator to move
leg-like struts between stowed and support positions (see Stimson, col. 10,
lines 5—17).
The Appellants also argue that Stimson’s power actuator is “coupled
to the wheel strut utilizing a bracket” and, therefore, “is not attached to the
exterior of the support leg as claimed.” (Appeal Br. 14.) In other words,
according to the Appellants, independent claim 1 requires “a direct
connection between the actuators and the legs.” (Reply Br. 8.) We are not
persuaded by this argument because the Appellants do not point to, and we
do not find, limitations (either expressly recited in the claim language or
couched in the Specification) requiring such a direct connection. (See e.g.,
Spec. 5, lines 1—6, 24—28.) As such, the Appellants do not persuasively
challenge the Examiner’s finding that Stimson teaches that an actuator can
be pivotally mounted to the exterior of a leg-like structure; and the
Appellants do not adequately address why, in view of this teaching by
Stimson, it would not have been obvious to mount Hodapp’s actuators 74 in
the claimed manner. (See Appeal Br. 14—15; see also Reply Br. 7—8.)
The Appellants further argue that the “claimed invention addresses a
long felt need in the onboard lift art.” (Appeal Br. 12.) We are not
persuaded by this argument because “[establishing long-felt need requires
objective evidence that an art-recognized problem existed in the art for a
long period of time without solution.” Ex Parte Jella, 90 USPQ2d 1009,
1019 (BPAI 2008). Here, “no affidavit, declaration or other evidence has
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Application 13/071,726
been provided in the record to substantiate or support [this] argument.”
(Answer 4.)
In view of the foregoing, we are not persuaded by the Appellants’
position that the Examiner errs in determining that the boat lift recited in
independent claim 1 would have been obvious over the prior art. Thus, we
sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Hodapp, Krause, and Schlender (Rejection I);
and we sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. § 103(a) as unpatentable over Hodapp, Stimson, and Schlender
(Rejection II).
Dependent Claims 2—10 and 12
The Appellants do not argue dependent claims 2—10 and 12 separately
from independent claim 1 (see Appeal Br. 12, 16) and so they fall therewith.
Thus, we sustain the Examiner’s rejection of dependent claims 2—10
and 12 under 35 U.S.C. § 103(a) as unpatentable over Hodapp, Krause, and
Schlender (Rejection I); and we sustain the Examiner’s rejection of
dependent claims 2—10 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Hodapp, Stimson, and Schlender (Rejection II).
Dependent Claim 11
Dependent claim 11 requires a “foot” to be “spring biased into an
extended engaging position for contacting a bottom surface of a body of
water.” (Appeal Br., Claims App.)
The Examiner finds that Hodapp’s boat lift includes pivotally
mounted foot portions 58. (See Final Action 4—5; see also Hodapp Fig. 1.)
And the Examiner determines that “the particular type of foot pad chosen,
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Application 13/071,726
whether spring biased or not, would have been a matter of design expedient
to one of ordinary skill in the art.” (Final Action 4.)
The Appellants argue that the prior art references do not “disclose a
spring biased foot.” (Appeal Br. 13.) We are not persuaded by this
arguments because the Examiner “need not seek out precise teachings
directed to the specific subject matter of the challenged claim” as “the
inferences and creative steps that a person of ordinary skill in the art would
employ” can be taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007).
Here, the prior art may not contain a precise teaching of a spring-
biased foot for the support leg of a boat lift. However, Hodapp discloses
that a support leg 36 can have a pivotally mounted foot 58 and Hodapp’s
foot 58 is shown in an extended engaging position for contacting the bottom
surface of the body of water. (See Hodapp Fig. 1.) Also, the Examiner finds
that “[sjpring biased feet for support legs are well known in the art” (Final
Action 4) and the Appellants do not persuasively challenge this finding (see
Appeal Br. 12—13, 16—17; see also Reply Br. 6). The Appellants do not
adequately address why one of ordinary skill in the art, armed with this
knowledge, would not have inferred that spring-biasing Hodapp’s foot 58
into its illustrated position would be a creative step worth considering.
Thus, we sustain the Examiner’s rejection of dependent claim 11
under 35 U.S.C. § 103(a) as unpatentable over Hodapp, Krause, and
Schlender (Rejection I); and we sustain the Examiner’s rejection of
dependent 11 under 35 U.S.C. § 103(a) as unpatentable over Hodapp,
Stimson, and Schlender (Rejection II).
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Application 13/071,726
Independent Claim 13
The Appellants argue only that the Examiner errs in rejecting
independent claim 13 for the same reasons discussed above in our analysis
of independent claim 1. (See Appeal Br. 13—14.) As the Appellants do not
establish that the Examiner errs in the rejection of independent claim 1, we
are not persuaded by these arguments.
Thus, we sustain the Examiner’s rejection of independent claim 13
under 35 U.S.C. § 103(a) as unpatentable over Hodapp, Krause, and
Schlender (Rejection I); and we sustain the Examiner’s rejection of
independent 13 under 35 U.S.C. § 103(a) as unpatentable over Hodapp,
Stimson, and Schlender (Rejection II).
Dependent Claims 14—20
The Appellants do not argue dependent claims 14—20 separately from
independent claim 13 (see Appeal Br. 12, 16) and so they fall therewith.
Thus, we sustain the Examiner’s rejection of dependent claims 14—20
under 35 U.S.C. § 103(a) as unpatentable over Hodapp, Krause, and
Schlender (Rejection I); and we sustain the Examiner’s rejection of
dependent claims 14—20 under 35 U.S.C. § 103(a) as unpatentable over
Hodapp, Stimson, and Schlender (Rejection II).
DECISION
We AFFIRM the Examiner’s rejections of claims 1—20.
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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