Ex parte JOHANSSON

Board of Patent Appeals and Interferences

Sep 3, 1998

08373069 (B.P.A.I. Sep. 3, 1998)

Application for patent filed January 13, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NILS E. JOHANSSON
_____________
Appeal No. 97-2713
Application 08/373,0691
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
NASE and CRAWFORD, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 5, 7 through 26, 29 and 32
through 34. The only other claims still pending in the
application, namely dependent claims 6, 30 and 31, are
Appeal No. 97-2713
Application 08/373,069
2
considered to be allowable subject to being rewritten in
independent form.
Appellant’s invention relates to a watercraft (claims 1
through 5, 7 through 25 and 29) and to a method of operating a
watercraft (claims 26 and 32 through 34). According to claim
1, the watercraft comprises an above-water transport unit (2),
an underwater unit (3) for supporting the above-water unit and
a means (4) for moving the two units towards and away from one
another.
A copy of the appealed claims is appended to
appellant’s brief.
In rejecting the appealed claims, the examiner relies
upon the following references:
Douglas 1,757,174 May 6, 1930
Anderson 2,596,194 May 13, 1952
Tulleners 3,430,595 Mar. 4,
1969
Barkley 3,541,987 Nov. 24, 1970
Appeal No. 97-2713
Application 08/373,069
3
Laukien 4,411,213 Oct. 25, 1983
The grounds of rejection are as follows:
1. Claims 1, 2, 9 through 12, 14, 17 through 20, 24,
26, 32 and 33 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Barkley.
2. Claims 3, 13, 15 and 16 stand rejected under 35
U.S.C. § 103 as being unpatentable over Barkley in view of
Douglas.
3. Claims 8, 21 and 25 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Barkley in view of Laukien.
4. Claims 4, 5 and 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Barkley in view of Douglas
and Laukien.
5. Claims 22 and 23 stand rejected under 35 U.S.C.
Appeal No. 97-2713
Application 08/373,069
4
§ 103 as being unpatentable over Barkley in view of Tulleners.
6. Claims 29 and 34 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Barkley in view of Anderson.
Reference is made to the examiner’s answer for details of
these rejections.
With regard to the examiner’s § 102(b) rejection of claim
1, the Barkley patent discloses a watercraft having a pair of
pontoon hulls 16 supporting a central hull 12 and a transport
unit in the form of a superstructure 32 on the deck 30 of the
central hull. Legs 14 attaching the pontoon hulls 19 to the
central hull are pivotally secured to the central hull by
pivots 46. Each leg 14 and its associated pontoon hull 19 are
swingable as a unit about the associated pivot 46 by a
hydraulic ram 58 to the positions shown in Figures 3-6 of the
patent drawings.
Appellant does not dispute the examiner’s finding that
Barkley’s pontoon hulls 16 define a unit which is disposed in
Appeal No. 97-2713
Application 08/373,069
5
the water for supporting an above-water transport unit.
Appellant also does not take issue with the examiner’s finding
on page 3 of the answer that Barkley’s superstructure 32 is an
above-water unit as broadly defined in claim 1. Appellant
does, however, take issue with the examiner’s finding that
Barkley’s pontoon hulls define an ?underwater unit? as recited
in claim 1. Appellant also contends that Barkley’s supporting
unit (pontoon hulls 16) and the above-water unit 32 are not
movable toward and away from one another as required by claim
1 because ?the pontoons 16 of Barkley are pivotally connected
to the abovewater [sic] unit 12 by pivot axes 46 and remain at
a fixed distance from such axes? (brief, page 10).
Admittedly, the operation of Barkley’s hydraulic rams 58
do not move the patentee’s pontoon hulls 16 toward and away
from the pivots 46. However, they do move the pontoon hulls
toward and away from the above-water superstructure 32 itself
as they are swung between the positions shown in Figures 3 and
4 of the patent drawings. In this regard, it is clear that the
linear distance between the longitudinal axis of the left hand
Appeal No. 97-2713
Application 08/373,069
With regard to the claimed moving means, appellant has neither asserted nor2
shown that, with respect to the sixth paragraph in 35 U.S.C. § 112, the Barkley
6
pontoon hull and a reference point on the above water unit 32,
such as the lower left hand corner of the above-water unit 32
as viewed from Figures 3 and 4, increases as the left hand
pontoon hull is moved from the position shown in Figure 3 to
the position shown in Figure 4. Conversely, this linear
distance is reduced as the left hand pontoon hull is moved
from the position shown in Figure 4 to the position shown in
Figure 3. Thus, when the claim language is given its broadest
reasonable interpretation (See In re Zletz, 893 F.2d 319, 321,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989)) without reading
limitations from the specification into the claim (See Sjolund
v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d 2020, 2027 (Fed.
Cir. 1988)), the recitation of the claimed
moving means does not distinguish from Barkley’s hydraulic
rams 58 and associated structure.2
Appeal No. 97-2713
Application 08/373,069
structure is not the equivalent of the structure disclosed in appellant’s specification
for accomplishing the claimed function. A corresponding observation was made by our
reviewing court in In re Mulder, 716 F.2d 1542, 1549, 219 USPQ 189, 196 (Fed. Cir.
1983).
7
With regard to the recitation that the supporting unit is
an ?underwater unit,? Barkley’s pontoon hulls 16 admittedly are
not expressly disclosed as being fully submerged in the water.
However, claim 1 is not directed to the combination of the
watercraft and a body of water to support a recitation that
the supporting unit is actually underwater in that body of
water. Instead, claim 1 is directed to the watercraft per se.
Thus, the recitation that the supporting unit is an
?underwater unit? is merely a statement of the manner in which
the supporting unit is intended to be used when placed in a
body of water.
Such a statement of intended use is not germane to the
patentability of claim 1. See Loctite Corp. v. Ultraseal Ltd.,
781 F.2d 861, 868, 228 USPQ 90, 94 (Fed. Cir. 1985); In re
Casey,
370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967) and In re
Lemin, 326 F.2d 437, 440, 140 USPQ 273, 276 (CCPA 1964). In
Appeal No. 97-2713
Application 08/373,069
8
any case, it is sufficient that Barkley’s pontoon hulls are
inherently capable of being place underwater given appropriate
load and buoyancy forces. Thus, claim 1 does not distinguish
from Barkley by reciting that the supporting unit is an
?underwater unit.?
Based on the foregoing analysis, we are satisfied that
all of the limitations in claim 1 are either expressly or
inherently disclosed in the Barkley patent. Barkley therefore
anticipates the subject matter of claim 1. See RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). Accordingly, we will sustain
the § 102(b) rejection of claim 1.
We will also sustain the § 102(b) rejection of dependent
claims 2, 9, 10, 14, 17 through 19 and 24 because the
patentability of each of these claims has not been argued
separately of claim 1. See In re Nielson, 816 F.2d 1567, 1572,
2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and In re Burckel, 592
F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979).
Appeal No. 97-2713
Application 08/373,069
9
With regard to claim 11, we cannot agree with appellant’s
argument that this claim patentably distinguishes from Barkley
by reciting that the bracing means is part of the underwater
unit. In Barkley, the hydraulic rams 58, upon being locked,
define a bracing structure which rigidly joins the pontoon
hulls 16 together through portions of legs 14 and hull 12.
This bracing structure, like pontoon hulls 16, is inherently
capable of being placed underwater. Accordingly, we will also
sustain the § 102(b) rejection of claim 11 since each and
every limitation encompassed by this claim is either expressly
or inherently disclosed in Barkley. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d at 1444, 221 USPQ at 388.
However, we cannot sustain the § 102(b) rejection of
claims 12 and 20. On page 3 of the answer, the examiner states
in substance that the movable control surfaces of claim 12 are
readable on Barkley’s legs 14. However, there is no express or
inherent disclosure in Barkley that any of the surfaces of
legs 14 are capable of providing vertical stability by the
exertion of forces at least equaling the buoyancy of the
Appeal No. 97-2713
Application 08/373,069
10
above-water and underwater units. With regard to claim 20,
there is no express or inherent disclosure in Barkley of a
signal transmitting means extending through the patentee’s
hydraulic rams 58. Since these limitation are not met by
Barkley, we cannot agree that Barkley constitutes a proper
anticipatory reference for the subject matter of claims 12 and
20.
We also cannot sustain the § 102(b) rejection of method
claims 26, 32 and 33. Claim 26 expressly recites the step of
maintaining the supporting part of the watercraft below the
surface of the water. Thus, in contrast to claim 1, claim 26
requires the supporting part to be underwater. Since this
limitation is not expressly or inherently met by Barkley, we
cannot agree that Barkley constitutes a proper anticipatory
for the subject matter of claim 26 and, hence, for the subject
matter of dependent claims 32 and 33.
With regard to the § 103 rejection of claims 3, 13, 15
and 16, the examiner concludes that the teachings of Douglas
would have made it obvious to provide either of Barkley’s
Appeal No. 97-2713
Application 08/373,069
11
pontoon hulls 16 with a fuel chamber and also to provide
Barkley’s watercraft with a directional control rudder
(presumably if it concluded that Barkley does not implicitly
disclose a rudder).
With respect to claim 3, Douglas teaches the concept of
providing a fuel tank in the supporting torpedo-shaped hull
for the self-evident purpose of locating the fuel tank near
the watercraft’s engine and also for conveniently utilizing
the available hollow storage space in the hull. Such a
teaching would have been ample motivation for providing at
least one of Barkley’s torpedo-shaped hulls 16, which carries
the engine driven propeller 26, with a fuel tank.
With regard to appellant’s arguments on page 13 of the
brief, the Douglas patent falls squarely within appellant’s
field of endeavor, namely watercraft. This reference,
therefore, is properly taken into account in evaluating the
patentability of the claimed subject matter under § 103. See
In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed. Cir.
1992).
Appeal No. 97-2713
Application 08/373,069
12
In view of the foregoing, we are satisfied that the
combined teachings of the applied references would have
suggested the subject matter of claim 3 to one of ordinary
skill in the art to warrant a conclusion of obviousness under
the test set forth in In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Accordingly, we will sustain the §
103 rejection of claim 3. We will also sustain the § 103
rejection of dependent claim 13 because the patentability of
this claim has not been argued separately of claim 1. See
Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528 and Burckel, 592
F.2d at 1178-79, 201 USPQ at 70.
With regard to the § 103 rejection of claim 16, appellant
does not contend that Douglas’ tubular members 20 do not act
as stiffening elements. Instead, appellant’s only argument
supporting patentability is that ?neither Barkley nor Douglas
discloses a hollow stiffening element which accommodates a
pipe? (brief, page 14). In Figure 4, Douglas shows a pipe type
ladder (i.e., a ladder made from pipe like elements) extending
through each element 20. In any event, in the course of
Appeal No. 97-2713
Application 08/373,069
13
providing Barkley’s watercraft with Douglas’ hollow elements
20, it would have been obvious to pass various plumbing and
conduit members though elements 20 as a convenient, protective
way to interconnect equipment in the superstructure 32 and in
the pontoon hulls 16. Accordingly, we will also sustain the §
103 rejection of claim 16.
However, we will not sustain the § 103 rejection of claim
15. We find no teaching or suggestion in either Barkley or
Douglas which would have motivated one of ordinary skill in
the art to utilize a fuel conduit as a stiffening element as
required by claim 15.
With regard to the § 103 rejection of claims 8, 21 and
25, the examiner concludes that the teachings of Laukien would
have made it obvious to provide Barkley’s pontoon hulls 16
with ballast tanks to improve the stability of the vessel,
presumably by controlling the buoyancy of the hulls.
Appellant’s arguments supporting patentability of claim 8 as
set forth on pages 14 and 15 of the brief are unpersuasive.
Appeal No. 97-2713
Application 08/373,069
14
In the first place, the Laukien patent falls squarely
within appellant’s field of endeavor, namely watercraft. This
reference, therefore, is properly taken into account in
evaluating the patentability of the claimed subject matter
under § 103. See Clay, 966 F.2d at 658, 23 USPQ2d at 1060.
Furthermore, contrary to appellant’s additional arguments
on page 14 of the brief, Laukien teaches in column 6, lines
12-17, that the ballast tanks are used to control buoyancy
even under conditions in which the supporting hulls are not
fully submerged, but are merely largely submerged to approach
a condition similar to that contemplated by Barkley. One of
ordinary skill in the art certainly would have recognized from
the cited prior art that ballast tanks are useful for
controlling the buoyancy of hulls in a semi-submerged state as
well as a fully submerged state. Also, the mere fact that
Barkley’s watercraft may be regarded as being fairly stable
does not mean that an additional advantage may not be derived
from the use of a buoyancy-controlling ballast system.
For the foregoing reasons, we will sustain the § 103
Appeal No. 97-2713
Application 08/373,069
15
rejection of claim 8. We will also sustain the § 103 rejection
of dependent claim 25 because the patentability of this claim
has not been argued separately of claims 1 and 8. See Nielson,
816 F.2d at 1572, 2 USPQ2d at 1528 and Burckel, 592 F.2d 1178-
79, 201 USPQ at 70.
We cannot, however, sustain the § 103 rejection of claim
21. The applied references are devoid of any suggestion of
providing Barkley’s hydraulic rams 58 with conduits for any
purpose, let alone the purpose recited in claim 21.
Turning now to the § 103 rejection of claims 4, 5 and 7,
appellant merely argues that these claims are patentable for
the reasons previously stated with respect to the Douglas and
Laukien references. Those arguments were not persuasive when
first considered and are not persuasive now for the reasons
discussed supra. Accordingly, we will sustain the § 103
rejection of claims 4, 5 and 7.
However, we cannot sustain the § 103 rejection of claims
22 and 23. With regard to claim 22, the applied references are
Appeal No. 97-2713
Application 08/373,069
16
devoid of any suggestion of extending electrical power
transmitting means through Barkley’s hydraulic rams 58. With
regard to claim 23, the applied references are also devoid of
any suggestion of extending any air conveying means through
Barkley’s hydraulic rams 58.
We also cannot sustain the § 103 rejection of dependent
method claim 34 because the teachings of Anderson do not
rectify the shortcomings of Barkley as discussed with respect
to claim 26.
Finally, we will sustain the § 103 rejection of claim 29.
Appellant’s argument that Anderson would not have been
considered by one of ordinary skill in the art as set forth on
page 17 of the brief is unpersuasive. Like Douglas and
Laukien, Anderson falls squarely within appellant’s field of
endeavor, namely watercraft. This reference, therefore, is
properly taken into account in evaluating the patentability of
the claimed subject matter under § 103. See Clay, 966 F.2d at
658, 23 USPQ2d at 1060.
Appeal No. 97-2713
Application 08/373,069
17
The only other argument supporting patentability of claim
29 is that there would have been ?no reason to make
[Barkley’s] legs 14 telescoping based on the teachings of
Anderson? (brief, page 18). This argument is also
unpersuasive. Claim 29 does not require any elements of the
moving means to be telescoping members. Therefore, the
telescoping feature may not be relied on to support the
patentability of claim 29 over the applied references. See In
re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982) and In
re Richards, 187 F.2d 643, 645, 89 USPQ 64, 66 (CCPA 1951).
In the final analysis, the movement of Barkley’s left
hand pontoon hull 16 and the patentee’s superstructure 32
toward and away from each other is ?essentially linear? (claim
29, line 3) at least for a limited distance. Appellant has not
argued otherwise.
The examiner’s decision rejecting the appealed claims is
affirmed with respect to claims 1 through 5, 7 through 11, 13,
14, 16 through 19, 24, 25 and 29, but is reversed with respect
to claims 12, 15, 20 through 23, 26 and 32 through 34.
Appeal No. 97-2713
Application 08/373,069
18
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2713
Application 08/373,069
19
T. Lewenstein
1516 W. Sunset Ridge Place
Tucson, AZ 85737