Ex Parte Hine et al

Board of Patent Appeals and Interferences

Mar 28, 2012

12082457 (B.P.A.I. Mar. 28, 2012)

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.
12/082,457 04/11/2008 Roger G. Hine JUP001-5 8758
7590 03/28/2012
T.H.P. Richardson
1055 Trinity Drive
Menlo Park, CA 94025
EXAMINER
OLSON, LARS A
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
03/28/2012 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 ROGER G. HINE, DEREK L. HINE, JOSEPH D. RIZZI,
KURT A.F. KIESOW, ROBERT BURCHAM, and WILLIAM A. STUTZ
____________

Appeal 2011-008643
Application 12/082,457
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008643
Application 12/082,457

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STATEMENT OF THE CASE
Roger G. Hine et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 5-9 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Harper (US 6,980,228 B1, issued Dec. 27,
2005) and Heyn (US 1,067,113, issued Jul. 8, 1913). Claims 1, 4, 14-17,
and 19 have been canceled and claims 2, 3, 10-12, 18, and 20 have been
allowed by the Examiner.1 We have jurisdiction over this appeal under 35
U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a float including a body 111 on which
are mounted solar panels 112, GPS receiver 113, antenna 114, and
electronics box 115. Spec. 29, ll. 27-29 and fig. 1.
Claim 5, the sole independent claim, is representative of the claimed
invention and reads as follows:
5. A float which
(A) when it is floating in still water, has a horizontal length and a
horizontal breadth, the breadth being most 0.3 times the length,
(B) comprises
(i) a satellite-referenced position sensor,
(ii) communications equipment for receiving signals, and
(iii) communications equipment for sending signals,
(C) does not include any component for propelling the float forward,
and
(D) comprises an upper surface which, when the float is floating in
still water, is substantially horizontal and exposed above the surface
of the water.

1 See Final Rejection, pp. 2 and 4, mailed Mar. 9, 2010.
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Application 12/082,457

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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 5 requires a float that includes (1) “a horizontal
length and a horizontal breadth, the breadth being [at] most 0.3 times the
length” and (2) “an upper surface which, when the float is floating in still
water, is substantially horizontal and exposed above the surface of the
water.” App. Br., Claims Appendix.
The Examiner found that Harper discloses a float including all the
limitations of independent claim 5 with the exception of having a horizontal
breadth that is at most 0.3 times the horizontal length. Ans. 3-4. Pointing to
Figure 2 of Heyn, the Examiner found that Heyn discloses a float having a
horizontal breadth that is at most 0.3 times the horizontal length. Ans. 4.
The Examiner concluded that
it would have been obvious to one of ordinary skill in the art at
the time of the invention, to utilize a float having a horizontal
breadth that is at most .3 times its horizontal length, as taught
by Heyn, in place of the float of the monitoring buoy system as
disclosed by Harper for the purpose of providing a float with
increased stability and surface area for supporting a sensor or
other electronic equipment.
Id.
Appellants argue that a person of ordinary skill in the art would not
have substituted Heyn’s kite-shaped plan view for Harper’s round plan view
because the “substitution would necessarily be accompanied by changing the
upper surface of the buoy so that it was convex and sloping.” App. Br. 6.
Hence, “[t]he resulting product would not have an upper surface which is
Appeal 2011-008643
Application 12/082,457

4
‘substantially horizontal’ as required by claim 5.” Id. See also, Reply Br. 1
and Figure 4 of Heyn. Thus, according to Appellants, “it is hard to imagine
a less satisfactory upper surface for mounting equipment than such a
surface.” App. Br. 7.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984). “A reference may be said to teach away
when a person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
In this case, we agree with Appellants that although Heyn may show a
float having a horizontal breadth that is at most 0.3 times the horizontal
length (see Heyn, fig. 3), Heyn’s float includes an upper convex, sloping
surface (see Heyn, fig. 4). See also, App. Br. 4 and 6. As such, substituting
Heyn’s kite-shaped float for Harper’s round-shaped buoy, as proposed by
the Examiner, would result in a float that does not include an upper surface
that is substantially horizontal2 when the float is floating in still water, as
called for by claim 5. Rather, such a substitution would result in a float
having an upper convex, sloping surface. Moreover, we note that Heyn

2 An ordinary and customary meaning of the term “horizontal” that is
most consistent with the Specification and the understanding of those of
ordinary skill in the art is “parallel to, in the plane of, or operating in a plane
parallel to the horizon or to a base line.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997).

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Application 12/082,457

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specifically discloses that Heyn’s float “in its normal position lies sloping in
the water.” Heyn, col. 2, ll. 71-72 and fig. 1. See also, App. Br. 4. Thus,
we are in agreement with Appellants that an upper convex, sloping surface
would be unsuitable for mounting thereon the elements of Harper, i.e.,
imaging device 18, computer 24, antenna assembly 22, power generating
devices 20, and communication devices 26. See Harper, col. 2, ll. 4-16 and
fig. 1. As such, in contrast to the buoy of Harper, which has a horizontal
surface to position a plurality of devices and lies in water in a horizontal
position, Heyn’s float has an upper surface that is a convex, sloping surface
and lies sloping in the water.
Lastly, we do not see how the convex, sloping surface of Heyn’s float
would provide an increased stability and surface area to the buoy of Harper,
as the Examiner states. See Ans. 6. The Examiner has not offered any
evidence or technical reasoning to reasonably support a finding that a person
of ordinary skill in the art would have recognized that the convex, sloping
surface of Heyn’s float would provide an increased stability and surface area
to the buoy of Harper. Thus, the Examiner’s articulated reason for the
combination lacks rational underpinnings.
In conclusion, for the foregoing reasons, the rejection of claim 5 and
its respective dependent claims 6-9 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Harper and Heyn cannot be sustained. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988).

Appeal 2011-008643
Application 12/082,457

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SUMMARY
The decision of the Examiner to reject claims 5-9 and 13 is reversed.

REVERSED

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