10973636 (B.P.A.I. Sep. 23, 2011)

Ex Parte Huizenga

Board of Patent Appeals and InterferencesSep 23, 2011

10973636 (B.P.A.I. Sep. 23, 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. 10/973,636 10/26/2004 John Charles Huizenga MSH-324 2063 76266 7590 09/23/2011 Timothy S. Stevens, Patent Attorney 5108 Foxpoint Circle Midland, MI 48642 EXAMINER OLSON, LARS A ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 09/23/2011 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 JOHN CHARLES HUIZENGA ________________ Appeal 2009-015163 Application 10/973,636 Technology Center 3600 ________________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY and STEFAN STAICOVICI, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1 decision finally rejecting claims 1-4 under 35 U.S.C. § 102(b) as being 2 anticipated by Ringdal (US 3,977,030, issued Aug. 31, 1976). The 3 Examiner has allowed claims 5-10. We have jurisdiction under 35 U.S.C. 4 § 6(b).5 Appeal No. 2009-015163 Application No. 10/973,636 2 We REVERSE. Pursuant to our authority under 37 C.F.R. §41.50(b), 1 we enter NEW GROUNDS OF REJECTION against claims 1-4 under 2 35 U.S.C. § 103(a) as being unpatentable over Ringdal. 3 Claims 1 is the sole independent claim on appeal: 4 1. A method for beaching a boat, 5 comprising the steps of: 6 (a) attaching one end of a first boat 7 fender to one end of a second boat fender to form a 8 first roller assembly; 9 (b) linearly positioning the first roller 10 assembly near and substantially parallel to a 11 shoreline of a body of water; 12 (c) positioning a boat in the water and 13 substantially perpendicular to the shoreline with 14 the center of the bow of the boat substantially 15 centered at the center of the first roller assembly; 16 and 17 (d) moving the boat toward and onto land, 18 the boat rolling on the first roller assembly. 19 Ringdal describes an apparatus for hauling up, launching and storing 20 a boat. The apparatus includes spherical buoyancy elements 12 rotatably 21 secured in pairs on either side of a frame 13. (Ringdal, col. 2, ll. 43-50.) 22 Ringdal describes effecting the buoyancy elements from air-filled hollow 23 bodies or closed-cell plastic foam. (Ringdal, col. 1, ll. 56-60.) The 24 Examiner has a reasonable basis for the finding that the spherical buoyancy 25 elements are capable of functioning as boat fenders. Although the Appellant 26 may not agree that the spherical buoyancy elements 12 are boat fenders (see 27 Br. 11), the Appellant has not introduced evidence to rebut the finding that 28 the spherical buoyancy elements 12 of the apparatus of Figures 5 and 6 of 29 Appeal No. 2009-015163 Application No. 10/973,636 3 Ringdal are boat fenders. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. 1 Cir. 1997); In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). 2 Ringdal teaches that, in the past, logs or mounted rollers were used to 3 haul up boats for storage on land. (Ringdal, col. 1, ll. 6-11.) Ringdal 4 identifies one object of Ringdal’s invention as being to 5 provide an arrangement which is preferably 6 adapted to utilization in connection with floating 7 stages and, in this manner, much landing stage 8 space can be saved and a further advantage is that 9 when a boat is hauled up, fouling is avoided. 10 (Ringdal, col. 1, ll. 16-20.) Ringdal further teaches replacing the traditional 11 rollers with rollers consisting of the buoyancy elements. (Ringdal, col. 1, ll. 12 23-28.) Ringdal states that these buoyancy elements support the weight of 13 the boat (id.), presumably when performing the method attributed to the 14 prior art. 15 In other words, Ringdal describes at column 1, lines 6-11 a method 16 including the steps of linearly positioning the first roller assembly (albeit a 17 roller assembly of logs or mounted rollers) near and substantially parallel to 18 a shoreline of a body of water and moving a boat positioned in the water 19 toward and onto land, the boat rolling on the first roller assembly. The 20 disclosure of Ringdal indicates that one of ordinary skill in the art would 21 have experience hauling up or beaching water craft. This implies that one 22 of ordinary skill in the art would have had reason to position the boat 23 substantially perpendicular to the shoreline with the center of the bow of the 24 boat substantially centered at the center of the first roller assembly so as to 25 ensure engagement of the boat hull with the roller assembly as the boat 26 moved onto land. 27 Appeal No. 2009-015163 Application No. 10/973,636 4 The Examiner has not shown that Ringdal describes a method for 1 beaching a boat including both the step of attaching one end of a first boat 2 fender to one end of a second boat fender to form the first roller assembly; 3 and moving the boat toward and onto land, the boat rolling on the first 4 roller assembly. The prior art method described by Ringdal at column 1, 5 lines 6-11 and cited by the Examiner at page 3 of the Answer does not 6 involve the use of boat fenders. While Ringdal teaches replacing the 7 traditional rollers with rollers consisting of the buoyancy elements, Ringdal 8 only appears to describe locating boats against a floating stage or other 9 suitable base such as a fixed quay or any projection from land. (Ringdal, 10 col. 1, ll. 28-30; col. 2, ll. 1-3 and col. 2, ll. 59-65.) Ringdal does not 11 describe using Ringdal’s apparatus for hauling a boat toward and onto land. 12 The Examiner offers no persuasive evidence that Ringdal uses the term 13 “hauled up” to imply hauling a boat toward and onto land as opposed to 14 toward and onto Ringdal’s apparatus or a suitable base. 15 Since Ringdal does not necessarily describe a method including all 16 limitations of claim 1, we do not sustain the rejection of claims 1-4 under 17 § 102(b) as being anticipated by Ringdal. (See Br. 9.) Nevertheless, 18 Ringdal supports the Examiner’s conclusion that “it is well known in the 19 art to use mounted rollers to facilitate the hauling up of boats to a storage 20 location on land.” (Ans. 3.) “[W]hen a patent claims a structure already 21 known in the prior art that is altered by the mere substitution of one element 22 for another known in the field, the combination must do more than yield a 23 predictable result” to avoid the conclusion that the structure would have 24 been obvious. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). 25 Since Ringdal’s spherical buoyancy elements 12 are capable of supporting a 26 Appeal No. 2009-015163 Application No. 10/973,636 5 boat on water, they likely would support a boat on land. It would have been 1 obvious to merely substitute the structure depicted in Figures 5 and 6 of 2 Ringdal for the mounted rollers mentioned by at column 1, lines 6-11 as a 3 means to haul a boat toward and onto land. The disclosure of Ringdal 4 indicates that such a substitution would have been within the level of 5 ordinary skill in the art. The Appellant provides no reason why such a 6 substitution would have yielded other than predictable results. 7 8 DECISION 9 We REVERSE the Examiner’s decision rejecting claims 1-4. 10 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW 11 GROUNDS OF REJECTION against claims 1-4 under § 103(a) as being 12 unpatentable over Ringdal. 37 C.F.R. § 41.50(b) provides that, “[a] new 13 ground of rejection pursuant to this paragraph shall not be considered final 14 for judicial review.” 15 Regarding the new ground of rejection, the Appellant must, WITHIN 16 TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of 17 the following options with respect to the new ground of rejection, in order to 18 avoid termination of the appeal as to the rejected claims: 19 (1) Reopen prosecution. Submit an appropriate amendment of the 20 claims so rejected or new evidence relating to the claims so rejected, or both, 21 and have the matter reconsidered by the examiner, in which event the 22 proceeding will be remanded to the examiner. . . [; or] 23 (2) Request rehearing. Request that the proceeding be reheard under 24 § 41.52 by the Board upon the same record. 25 Appeal No. 2009-015163 Application No. 10/973,636 6 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2 3 REVERSED; 37 C.F.R. § 41.50(b) 4 5 JRG 6 7 8