Ex Parte Hofbauer

Patent Trial and Appeal Board

Aug 26, 2016

12397056 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/397,056 0310312009
26211 7590 08/30/2016
FISH & RICHARDSON P.C. (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Thomas J. Hofbauer
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.
23128-0002002 7401
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. HOFBAUER
Appeal2014-004226 1
Application 12/397 ,0562
Technology Center 3600
Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 5-10, 31, 33, and 35-38. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on August 16, 2016.
We AFFIRM-IN-PART.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
October 8, 2013) and Reply Brief ("Reply Br.," filed February 5, 2014), and
the Examiner's Answer ("Ans.," mailed December 5, 2013) and Non-Final
Office Action ("Non-Final Act.," mailed September 11, 2012).
2 Appellant identifies High Bar Horizons, LLC, as the real party in interest
(Appeal Br. 3).
Appeal2014-004226
Application 12/397,056
CLAIMED INVENTION
Appellant's invention "relates to sailing vessel appendages that
simultaneously control leeward drift forces, heeling forces, effective weight,
and drag" (Spec. 1, 11. 8-10).
Claims 31 and 33, reproduced below with added bracketed notations,
are illustrative of the subject matter on appeal:
31. A sailing-vessel comprising:
[a] a hull;
[b] an appendage extending from said hull and having a
vertical midplane;
[ c] a first flap rotatably attached to said appendage and
disposed proximate its tip end;
[d] a second flap rotatably attached to said appendage and
disposed proximate its root end;
[ e] wherein said first flap and said second flap are capable
of being controlled independently of each other;
[ f] wherein said flaps rotate about a substantially vertical
axis disposed substantially within said vertical midplane.
33. A sailing-vessel keel comprising:
[a] an appendage;
[b] a first flap rotatably attached to said appendage
proximate its tip end and adapted to generate counter-heeling
forces when rotated;
[ c] a second flap rotatably attached to said appendage
proximate its root end and adapted to generate counter-leeward-
drift forces when rotated;
[ d] wherein said first flap and said second flap are capable
of being rotated independently of each other; and
[ e] wherein said flaps are capable of changing the effective
camber of the keel when rotated.
(Appeal Br. 46 (Claims App.)).
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REJECTIONS3
Claims 5-10, 31, and 35-38 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with enablement and written description
requirements.4
Claim 33 is rejected under 35 U.S.C. § 102(b) as anticipated by
Collins (US 4,920,906, iss. May 1, 1990).
Claims 5, 6, 8, 31, 33, and 35-38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lyman (US 2,858,788, iss. Nov. 4, 1958) and
Bianchi (US 2004/0194683 Al, pub. Oct. 7, 2004).
Claims 35-38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lyman, Bianchi, and Lopriore (WO 2006/131622 Al, pub. Dec. 14,
2006).
Claims 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lyman, Bianchi, and Howes (WO 2005/061319 Al, pub.
July 7, 2005). 5
3 The Examiner withdrew a rejection of independent claim 3 3 under 3 5
U.S.C. § 102(b) as anticipated by Lyman (see Ans. 2). The Examiner also
withdrew a rejection of independent claim 31 and dependent claims 5, 6, and
8 under 35 U.S.C. § 103(a) as unpatentable over Lyman (see id.).
4 Claims 5-10 and 31 appear to be rejected only under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement and
claims 35-38 appear to be rejected only under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement (see, e.g.,
Non-Final Act. 2-3; see also Ans. 3). We note, however, that this lack of
clarity does not affect the ultimate disposition of this case.
5 The Non-Final Action also included a rejection of claims 7, 9, and 10
under 35 U.S.C. § 103(a) as unpatentable over Lyman and Howes. As the
Examiner withdrew the rejection of independent claim 31under35 U.S.C.
§ 103(a) as unpatentable over Lyman, we believe the rejection of claims 7,
9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Lyman and Howes,
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Application 12/397,056
ANALYSIS
Rejections of claims 5-10, 31, and 35-38 under 35U.S.C.§112,first
paragraph
Independent claim 31 and dependent claims 5-10
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claim 31, and claims 5-10 which depend therefrom,
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (see Appeal Br. 13-15; see also Reply Br. 3-5).
The Examiner maintains that there is no written description support
in the Specification to support "first and second independently
rotatable/controllable flaps which rotate on the same substantially vertical
axis," i.e., "wherein said flaps rotate about a substantially vertical axis
disposed substantially within said vertical midplane," as recited by
independent claim 31 (Ans. 3). Instead, the Examiner finds "the drawings
would provide support for flap axes being substantially vertical, [but that]
they do not provide support for claiming that both flaps rotate about a
common axis" (id. at 8).
However, we agree with Appellant that the Specification, as filed,
conveys with reasonable clarity to one of ordinary skill in the art that
Appellant had possession, at the time the application was filed, of "first and
second independently rotatable/controllable flaps which rotate on the same
should have also been withdrawn, as it depends on the rejection of
independent claim 31 under 35 U.S.C. § 103(a) as unpatentable over Lyman,
and we consider the rejection withdrawn for purposes of this appeal.
Notwithstanding, we note this discrepancy does not affect the ultimate
disposition of this case.
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Application 12/397,056
substantially vertical axis," as required by independent claim 31. In this
regard, we note the Specification discloses that "Figure 9b illustrates the
detail of the embodiment of the present invention shown in Figure 9a
showing both an upper, leading hydrofoil member 101 and a lower, trailing
hydrofoil member 102 hydrofoil projecting from a common axis mounted
within a keel" (id. at 25, 11. 15-18). Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 112, first paragraph, of independent
claim 31, and claims 5-10, which depend therefrom.
Independent claims 37 and 38, and dependent claims 35 and 36
In rejecting claims 35-38 under 35 U.S.C. § 112, first paragraph, the
Examiner states that Appellant's "claimed control system has not been
disclosed so as to enable one of ordinary skill in the art to make and/or use
same" (Ans. 3). The Examiner asserts that "[t]he objects of the invention set
forth the desirability to independently control the flaps based upon several
vessel parameters, but it is unclear what the control system is" (id.). The
Examiner further reasons
(Id.).
[s]ince the claimed control system as disclosed is controlled by
algorithm, such an algorithm must be adequately disclosed. It is
not enough that one skilled in the art could write a program to
achieve the claimed function. The specification must disclose
the algorithm by setting forth the necessary steps and/or flow
charts that perform the claimed function in sufficient detail such
that one of ordinary skill can reasonably conclude that the
inventor invented the claimed subject matter.
The test for compliance with the enablement requirement of 35 U.S.C.
§ 112, first paragraph, is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. In re Wands, 858 F.2d
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731, 737 (Fed. Cir. 1988). To evaluate whether a disclosure would require
undue experimentation, the Federal Circuit has adopted the following factors
to be considered: ( 1) the quantity of experimentation needed to make or use
the invention based on the content of the disclosure; (2) the amount of
direction or guidance presented; (3) the existence of working examples;
( 4) the nature of the invention; ( 5) the state of the prior art; ( 6) the relative
skill of those in the art; (7) the level of predictability in the art; and
(8) the breadth of the claims (id.). An analysis of whether the enablement
requirement is met must consider all the evidence related to each of these
factors, and any conclusion of non-enablement must be based on the
evidence as a whole (id.).
Here, although the Examiner finds that"[ o ]ne of ordinary skill in the
art would have to do undue experimentation to invent an automatic control
system for controlling the flaps based upon the sensed parameters of
position, velocity, heading and track" (Ans. 10), the Examiner fails to
explain why a person of ordinary skill in the art would have to engage in
undue experimentation to practice the claimed invention. Instead, the
Examiner concludes that "a person would have to invent the algorithm
hinted at in the specification to provide such automated control" (id.), but
fails to address any of the other Wands factors, e.g., the state of the prior art,
the relative skill of those in the art, the predictability or unpredictability of
the art. Thus the analysis of Wands factors was not articulated sufficiently
by the Examiner for claims 35-38.
In addition, as Appellant points out (Appeal Br. 23-25), the
Specification discloses that its system
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incorporate[ s] servo controls to make sensitive, self regulated,
automatic performance corrections and systems that can be
controlled in response to positioning, apparent wind velocity and
direction, vessel velocity, heading and track data received from
on board instrumentation, GPS or the like and attitude data
obtained from gyroscopic, gravitational, magnetic or like
instrumentation.
(Spec. 16, 11. 14--19). Thus, even without disclosing a mathematical
algorithm, the ordinary artisan would understand the concept of using "servo
controls to make sensitive, self regulated, automatic performance
corrections" based on available data (see id.). Rather than omitting a
description in the original Disclosure, because the Appellant does not limit
the way the sailing vessel's "roll" and "leeward drift" are determined, the
claims are interpreted broadly.
For this reason, the Examiner has failed to establish a prima facie case
that the requirements of 35 U.S.C. § 112, first paragraph, are not met, and
we are persuaded further by Appellant's argument that the Specification has
provided an adequate and enabled disclosure to meet the requirements of 35
U.S.C. § 112, first paragraph. Therefore, we do not sustain the Examiner's
rejection of claims 35-38 under 35 U.S.C. § 112, first paragraph.
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Rejection of claims independent claims 31, 33, 37, and 38, and dependent
claims 5, 6, 8, 3 5, and 3 6 as obvious over Lyman and Bianchi
Independent claim 33
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 33 under 35 U.S.C. § 103(a) because
the combination of Lyman and Bianchi fails to disclose or suggest
"independently controllable counter-leeward drift and counter heeling
means," as required by independent claim 33 (Appeal Br. 34--36; see also
Reply Br. 14--15). Instead, we agree with the Examiner that the combination
of Lyman and Bianchi disclose the argued feature (see Non-Final Act. 7-8;
see also Ans. 16-18).
Lyman is directed to a "single-hulled sailboat having a keel with
control surfaces thereon for counteracting heeling and skidding" (Lyman,
col. 1, 11. 53-54; see also id. at col. 3, 11. 69-72). More particularly, Lyman
discloses "a vertical keel with control surfaces articulated thereon for
producing roll-opposing forces or torques about a craft axis parallel to the
hull longitudinal axis; means for controlling these surfaces upon rolling of
the craft whereby the craft is maintained in a substantially upright attitude"
(id. at col. 1, 11. 59---64). In this regard, Lyman discloses "a control surface
20 articulated on keel 16 near the lower trailing edge thereof for movement
about an axis substantially parallel to the vertical axis of the craft" (id. at col.
3, 11. 72-76). Lyman also discloses a "second control surface 21" which is
on the upper end of "keel 16" and articulated "near the trailing edge thereof
for pivotal movement about an axis substantially parallel to the vertical axis
of the craft" (id. at col. 4, 11. 17-21 ). Lyman further discloses that "control
surface 21" is used to produce a force to counteract skidding or slipping (id.
at col. 4, 11. 29-34) and "control surface 20" is actuated "in a direction and to
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Application 12/397,056
an amount to counteract the heeling torque produced by the wind on the sail"
(id. at col. 5, 11. 25-28). Lyman discloses that "control surface 21 is rotated
in a direction opposite to that of the control surface 20" (id. at col. 4, 11. 22-
23).
Bianchi is directed to a sailboat equipped with a finkeel "having a
fixed base portion fixed with respect to the hull, and a moving end portion
formed by two lee-boards hinged in book arrangement at the end of the fixed
portion, rotatable independently of each other" (Bianchi i-f 16; see also id.
ff 30-32). Bianchi discloses "two fins 32 and 33 projecting from the fixed
part and rotating with respect to a common horizontal hinging axis X, lying
in the midplane M of the finkeel" (id. i-f 28). Bianchi further discloses "lee-
board 33 together with the ballast 37 is displaced, moving away its centre of
gravity from the midplane M such that its weight increases the moment that
counter-heels the inclination of the boat caused by the wind" (id. i-f 40). We
also note that Bianchi discloses
while in the known art the displacement of the movable finkeel
for righting the boat increases the tendency of the hull to drift,
now with the two independent movable lee-boards 32, 33 it is
possible to obtain simultaneously the dual effect of counter
heeling the inclination of the hull and keeping unvaried its
resistance to the leeway.
(Id. i-f 46).
Appellant argues that "Bianchi cannot generate counter-heeling
hydrodynamic forces acting laterally on the keel. It cannot generate counter-
leeward-drift hydrodynamic forces acting laterally on the keel. It cannot
change the effective camber of the keel. And it cannot create counter-
leeward-drift forces that act at the root of the keel" (Appeal Br. 35).
However, Appellant's argument is not persuasive at least because
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Application 12/397,056
independent claim 33 is rejected as unpatentable over the combination of
Lyman and Bianchi, and not over Bianchi alone. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking [the] references individually where the rejection is
based upon the teachings of a combination of references.").
Here, the Examiner relies on Lyman to disclose a "a first flap ... to
generate counter-heeling forces when rotated" and "a second flap ... to
generate counter leeward-drift forces when rotated" (Non-Final Act. 7), but
acknowledges that Lyman does not disclose "independent rotation/control of
the hydrofoils 20 and 21" (id.). And to address this deficiency, the
Examiner turns to Bianchi (id.). In particular, the Examiner finds "Bianchi
discloses independently controllable counter-leeward drift and counter-
heeling means," and concludes that "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to independently control
the leeward drift and roll control elements of Lyman as taught by Bianchi"
in order to "provid[ e] a more precise control of the vessel responsive to
actual conditions encountered" (id.). Thus, Appellant's argument is not
persuasive to show error.
Appellant also argues that "both Lyman and Bianchi teach away from
the claimed invention[]" (Appeal Br. 35; see also Reply Br. 14). More
particularly, Appellant argues
Lyman, when considered as a whole, teaches away from the
claimed invention because its complicated and interrelated
design requires that surfaces 20 and 21 not be independently
controlled. And Bianchi's split-keel design is "symmetrical with
respect to the axis of rotation" (Bianchi i-f49) thus teaching away
from varying the laterally-acting hydrodynamic forces on the
keel at all, let alone independently varying the forces on the keel
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Application 12/397,056
at the root and tip ends to counter leeward drift and heeling
respectively.
(Appeal Br. 35). However, Appellant's teaching away argument is not
persuasive at least because Appellant does not point to any passage in either
Lyman or Bianchi that "criticize[s], discredit[s] or otherwise discourage[s]"
Bianchi' s disclosure regarding independent movement of its two lee-boards
(see Bianchi i-fi-f 16, 30-32) which provide both counter-heeling forces and
resistance to the leeway (see id. i1 46) from addressing the argued feature.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed).
Appellant further argues that the combination of Lyman and Bianchi
fails to disclose or suggest the subject matter of independent claim 33
because "the proposed combination would change the entire principle of
operation of Lyman," and as such, render Lyman "unsatisfactory for its
intended purpose" (Appeal Br. 35-36; see also Reply Br. 14--15). More
particularly, Appellant asserts that Lyman's basic principle of operation is
the use of single control movement to rotate two control surfaces at the same
time through a single "control stick" (Appeal Br. 32, 35). Appellant,
however, defines the principle of operation too narrowly. The "principle of
operation" referred to by Appellant relates to the "basic principles" under
which the prior art device was designed to operate. In re Ratti, 270 F.2d
810, 813 ("This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.") (emphasis
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added). Under Ratti, "a change in the basic principles" refers to change that
is fundamental in scope so as to relate to scientific or technical principles
under which the invention is designed to operate. Here, we note that the
Examiner's proposed combination does not fundamentally change the
technical basis of how Lyman's flaps would generate "counter-heeling
forces" and "leeward-drift forces" when rotated; but rather, only modifies
the flaps to the extent which they would be independently rotatable. Thus,
the Examiner's proposed combination would not render Lyman
unsatisfactory for its intended purpose or change its basic principles of
operation. Consequently, Appellant's argument is unpersuasive because the
Examiner does not propose any bodily incorporation of Lyman into Bianchi
or vice versa.
We also are not persuaded of error by Appellant's argument that the
Examiner's proposed combination of Lyman and Bianchi is improper
because it is based on the impermissible use of hindsight (Appeal Br. 14--
15). The Examiner provides articulated reasoning with some rational
underpinning to support the obviousness determination at page 7 of the Non-
Final Office Action. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). We note that
Appellant's argument does not address whether the modification described
by the Examiner is more than the predictable use of prior art elements
according to their established functions, nor does Appellant specifically
mention or contest the substance of the Examiner's rationale, but rather
relies only on arguments based on the bodily incorporation of Lyman into
Bianchi or vice versa.
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In view of the foregoing, we sustain the Examiner's rejection of
independent claim 33 under 35 U.S.C. § 103(a) as unpatentable over Lyman
and Bianchi.
Independent claim 31 and dependent claims 5, 6, and 8
Appellant argues that the Examiner erred in rejecting independent
claim 31under35 U.S.C. § 103(a) because the combination of Lyman and
Bianchi fails to disclose or suggest "wherein said flaps rotate about a
substantially vertical axis disposed substantially within said vertical
midplane," as recited by independent claim 31 (Appeal Br. 36-37; see also
Reply Br. 15-16).
In the Non-Final Action, the Examiner finds that "Lyman discloses
the claimed invention with exception of rotation of the flaps on a common
axis" (Non-Final Act. 5). More particularly, the Examiner finds
it is clear that the foils 20 and 21 either rotate on a common axis,
or very closely aligned axes, and to have such foils rotatable on
a common axis \'l/ould have been \'l1ell \'l1ithin the level of skill of
the ordinary routineer working in the art at the time of the
invention, providing results exactly as would have been
expected.
(Id. at 5---6).
The Examiner reasons that "both flaps rotating on a common axis
would provide for ease in manufacturing the appendage" (id. at 6) and "the
rotation axis being disposed in a mid-plane of the appendage, such
is ... notoriously old and well known in the art, and it would have been
obvious to place the rotation axis of Lyman at that location" (id.). The
Examiner, thus, concludes that "[s]uch a placement of the axis would have
been desirable so as to provide for a symmetric arrangement of the flaps
with respect to the center plane of the appendage, such that the forces
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generated would be the same when rotated the same degree right or left" (id.
at 6-7).
In response, Appellant argues that the Examiner's conclusion that it
"would have been obvious simply because it would have been 'well within
the level of skill of the ordinary routineer working in the art' and would have
worked just as expected" is based on improper hindsight reasoning (Appeal
Br. 36-37). The Examiner does not respond to this argument in any detail
(see, e.g., Ans. 16-18), and we fail to see why such a configuration would
have been obvious to one of ordinary skill in the art at the time of the
invention for the reasons provided by the Examiner. Thus, the Examiner
fails to establish that the combination of Lyman and Bianchi discloses or
suggests "wherein said flaps rotate about a substantially vertical axis
disposed substantially within said vertical midplane," as recited by
independent claim 31. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968) ("The Patent Office has the initial
duty of supplying the factual basis for its rejection. It may not, because it
may doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.").
In view of the above, we do not sustain the Examiner's rejection of
independent claim 31 and claims 5, 6, and 8, which depend from
independent claim 31, under 35 U.S.C. § 103(a) as unpatentable over Lyman
and Bianchi.
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Dependent claim 3 6
Claim 36 depends from independent claim 33, and recites
a control system capable of increasing sailing efficiency by
automatically: (1) determining said sailing vessel's roll, and in
response to that determination, adjusting said first flap in order
to create lateral hydrodynamic forces on the keel that act to
counter the sailing vessel's roll; (2) determining said sailing
vessel's position, velocity, heading, and track and, in response to
that determination, adjusting said second flap in order to create
lateral hydrodynamic forces on the keel that act to counter the
sailing vessel's leeward drift.
(Appeal Br. 47 (Claims App.)).
We are persuaded by Appellant's argument that the Examiner erred in
rejecting dependent claim 36 under 35 U.S.C. § 103(a) because the
combination of Lyman and Bianchi fails to disclose or suggest
a control system capable of increasing sailing efficiency by
automatically: ... (2) determining said sailing vessel's position,
velocity, heading, and track and, in response to that
determination; adjusting said second flap in order to create lateral
hydrodynamic forces on the keel that act to counter the sailing
vessel's leeward drift.
(Appeal Br. 37--40; see also Reply Br. 16-17). More particularly, Appellant
argues that the Examiner fails to establish where either of Lyman or Bianchi
disclose or suggest "art using instrumentation for measuring leeward drift or
heeling to optimize sailing efficiency. Instead, the Examiner appears to rely
on hindsight and has impermissibly used what was learned from the
Applicant's disclosure against the Applicant" (Appeal Br. 39).
In response, the Examiner finds
[i]t is well known that when sailing a vessel, the sailor would be
aware of his/her destination, the amount of heel, the amount of
drift, the vessel's position, and the amount of roll, and having a
system for countering leeward drift and for countering roll,
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would operate such a system responsive to his or hers sensed
and/or measured values.
(Ans. 18). The Examiner further finds that "[s]uch constitutes an[] old and
well known manual control of a sailing vessel," and concludes that
"Appellant's claims directed towards an automatic control (claims 35-38)
merely recite known sensed parameters, and the use thereof to automatically
operate the vessel of Lyman as modified by Bianchi" (id.). We cannot
agree.
In making this determination, we find that the Examiner has failed to
provide any factual basis to establish that either Lyman or Bianchi, alone or
in combination, discloses or suggests "determining said sailing vessel's
position, velocity, heading, and track and, in response to that determination,
adjusting said second flap in order to create lateral hydrodynamic forces on
the keel that act to counter the sailing vessel's leeward drift," as recited by
dependent claim 36, such that it would merely be obvious "to modify the
vessel of Lyman to provide a control system for automatically performing
the steps normally done manually by the sailor" (Non-Final Act. 8), as the
Examiner concludes. We acknowledge, although the Examiner does not cite
to it, that Lyman discloses "an automatic control means for controlling the
operation of control surfaces 20 and 21" (Lyman, col. 5, 11. 45-50; see also
id. at col. 6, 11. 10-50), however, Lyman discloses that its automatic control
system is used to counteract heeling forces, not leeward forces. Therefore,
in the absence of any additional evidence, the Examiner fails to establish that
the combination of Lyman and Bianchi discloses or suggests "a control
system capable of ... automatically: ... (2) determining said sailing vessel's
position, velocity, heading, and track and, in response to that determination,
adjusting said second flap in order to create lateral hydrodynamic forces on
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the keel that act to counter the sailing vessel's leeward drift," as recited by
dependent claim 36. See Warner, 379 F.2d at 1017.
In view of the above, we do not sustain the Examiner's rejection of
dependent claim 36 under 35 U.S.C. § 103(a) as unpatentable over Lyman
and Bianchi.
Independent claims 37 and 38
Independent claims 37 and 38 include a limitation substantially
similar to the limitation recited in dependent claim 3 6, and the Examiner
rejects claims 37 and 38 on the same basis (see Non-Final Act. 7-8). Thus,
for the same reasons, we also do not sustain the Examiner's rejection of
independent claims 37 and 38 under 35 U.S.C. § 103(a) as unpatentable over
Lyman and Bianchi.
Rejection of independent claims 37 and 38, and dependent claims 35 and 36
as obvious over Lyman, Bianchi, and Lopriore
Independent claim 3 7
Independent claim 3 7 recites
a control system capable of increasing sailing efficiency by
automatically (1) determining said sailing vessel's roll and, in
response to that determination, adjusting said counter-heeling
means in order to counter the sailing vessel's heeling and (2)
determining said sailing vessel's position, velocity, heading, and
track and, in response to that determination, adjusting said
counter-leeward-drift means in order to counter the sailing
vessel's leeward drift.
(Appeal Br. 48 (Claims App.)). Independent claim 38 includes a
substantially similar limitation (see Appeal Br. 49 (Claims App.)).
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 37 under 35 U.S.C. § 103(a) because
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the combination of Lyman,Bianchi, and Lopriore fails to disclose or suggest
"a control system capable of ... automatically ... (2) determining said
sailing vessel's position, velocity, heading, and track and, in response to that
determination, adjusting said counter-leeward-drift means in order to counter
the sailing vessel's leeward drift," as recited by independent claim 37
(Appeal Br. 40-42; see also Reply Br. 17). Instead, we agree with the
Examiner that the combination of Lyman, Bianchi, and Lopriore discloses
the argued feature (see Non-Final Act. 9; see also Ans. 19).
As discussed above, the Examiner relies on Lyman as disclosing
generally a sailboat keel with control surfaces, i.e., flaps, for counteracting
heeling and leeward skidding (see Lyman, col. 1, 11. 53-54; see also id. at
col. 3, 11. 69-72), and Bianchi, as disclosing generally a sailboat equipped
with a finkeel using "two independent movable lee-boards 32, 33 ... to
obtain simultaneously the dual effect of counter heeling the inclination of the
hull and keeping unvaried its resistance to the leeway" (Bianchi i-fi-f 16, 30-
32, 46).
The Examiner, however, now acknowledges that "Lyman fails to
specifically teach an automatic pilot system" (Non-Final Act. 9) and cites
Lopriore as disclosing "an automatic pilot for a sailboat, including use of
sensors to detect movement caused by waves and such, such as roll and
drift" (id.). Based on this disclosure, the Examiner concludes that "[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to employ an automatic system for operating the various sailing
systems of Lyman responsive to various sensed parameters, such as course,
drift, roll, and speed as taught by Lopriore" (id.).
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Lopriore is directed to a system "for automatic piloting of sail boat for
sailing in the presence of waves" (Lopriore, Title). More particularly,
Lopriore discloses its
invention concerns a module (MC) for generating piloting
correction signals (SC) for an automatic piloting system of a sail
boat comprising: an input (EM) for a signal (SM) indicating a
movement of the boat caused by the waves; an elaboration unit
(UE) for generating a piloting correction signal (SC) from said
signal (SM) indicating a movement of the boat; and an output
(SC) for said piloting correction signal (SC), wherein said
piloting correction signal (SC) is determined so as to bring about
a correction of the boat's route in the direction where from the
waves originate corresponding to crossing over the crests thereof
(CI, CII) and in the opposite direction corresponding to crossing
over the trough thereof (CR). The invention also concerns a sail
boat automatic piloting system comprising such a module (MC).
(Id., Abstract).
We also are not persuaded by Appellant's argument that the
combination of Lyman, Bianchi, and Lopriore fails to disclose or suggest
"the claimed control system [that] automatically adjusts the keel in order to
create forces that counter act [sic] heeling and leeward drift" because
Lopriore merely "teaches a system to automatically adjust the boat's rudder
in order to steer the boat in a particular direction" (Appeal Br. 41; see also
Reply Br. 17). Instead, we agree with the Examiner that "Lopriore provides
a main pilot module in order to keep the sailboat on a predetermined course,
a movement detector which detects movements caused by waves, and
steering correction signal generator for causing steering correction (Ans. 19;
see also Lopriore, Abstract). We also agree with the Examiner that one of
ordinary skill in the art would understand and appreciate the "differences in
vessel controls" (id.) between a rudder and keel flaps.
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To the extent Appellant argues that controlling steering is not the
same as controlling a rudder (Reply Br. 17), we note that Lyman discloses
"an automatic control means for controlling the operation of control surfaces
[i.e., flaps,] 20 and 21" (Lyman, col. 5, 11. 45-50; see also id. at col. 6, 11.
10---50). More particularly, Lyman discloses
[ w ]ith clutch 81 engaged, placing the craft under automatic
control, any heeling of the craft due to wind force on the sail will
be detected by the pendulum 82 swinging away from the vertical.
Such swing of the pendulum 82 will rotate torque arm 2 7 of the
control system and apply a deflecting force on control surface 20
through cable 32 in a direction to counteract the heeling motion.
(Id. at col. 6, 11. 43--49). As such, Lyman discloses a control system that
automatically adjusts the keel, thus resulting in the creation of hydrodynamic
forces that counteract "heeling forces" and "leeward drift forces." Thus, the
combination of Lyman, Bianchi, and Lopriore renders obvious the "control
system" recited by independent claim 3 7.
In view of the foregoing; we sustain the Examiner's rejection of
independent claim 37 under 35 U.S.C. § 103(a) as unpatentable over Lyman,
Bianchi, and Lopriore.
Independent claim 38 and dependent claim 36
Independent claim 38, and claim 36 which depends from independent
claim 33, include a limitation substantially similar to the limitation recited in
independent claim 3 7. Appellant relies on the same arguments we found
unpersuasive in connection with independent claim 37 (see Appeal Br. 42).
Thus, for the same reasons, we also sustain the Examiner's rejection of
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independent claim 38 and dependent claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Lyman, Bianchi, and Lopriore.
Dependent claim 35
Claim 3 5 depends on independent claim 31. The Examiner's rejection
of claim 35 based on Lopriore, in combination with Lyman and Bianchi,
does not cure the deficiency in the Examiner's rejection of independent
claim 31. Therefore, we do not sustain the Examiner's rejection of
dependent claim 35 under 35 U.S.C. § 103(a) as unpatentable over Lyman,
Bianchi, and Lopriore for the same reasons set forth above with respect to
the independent claim 3 1.
Rejection of dependent claims 7, 9, and 10 as obvious over
Lyman, Bianchi, and Howes
Claims 7, 9, and 10 depend on independent claim 31. The Examiner's
rejection of claims 7, 9, and 10 based on Howes, in combination with Lyman
and Bianchi, does not cure the deficiency in the Examiner's rejection of
independent claim 31. Therefore, we do not sustain the Examiner's rejection
of dependent claims 7, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Lyman, Bianchi, and Howes, for the same reasons set forth above with
respect to the independent claim 31.
Rejection of independent claim 33 as anticipated by Collins
As discussed above with respect to the Examiner's rejection of
independent claim 33 as unpatentable over Lyman and Bianchi, Appellant
has not established error on the part of the Examiner, and as such,
independent claim 33 stands rejected. Because our affirmance of this
ground of rejection is dispositive as to the rejection of independent claim 33
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on appeal, we do not reach the remaining rejection of independent claim 33
as anticipated by Collins.
DECISION
The Examiner's rejections of claims 5-10, 31, and 35-38 under 35
U.S.C. § 112, first paragraph, are reversed.
The Examiner's rejection of claims 5, 6, 8, 31, and 35-38 under 35
U.S.C. § 103(a) as unpatentable over Lyman and Bianchi is reversed.
The Examiner's rejection of claim 33 under 35 U.S.C. § 103(a) as
unpatentable over Lyman and Bianchi is affirmed.
The Examiner's rejection of claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Lyman, Bianchi, and Lopriore is reversed.
The Examiner's rejection of claims 36-38 under 35 U.S.C. § 103(a) as
unpatentable over Lyman, Bianchi, and Lopriore is affirmed.
The Examiner's rejection of claims 7, 9, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Lyman, Bianchi, and Howes is reversed.
We do not reach the merits of the Examiner's rejection of claim 33
under 35 U.S.C. § 102(b) as anticipated by Collins.
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-IN-PART
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