Ex Parte Keller

Board of Patent Appeals and Interferences

Aug 12, 2009

10157875 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN H. KELLER
____________________

Appeal 2009-010191
Application 10/157,875
Technology Center 3600
____________________

Decided: August 12, 2009
____________________

Before: WILLIAM F. PATE, III, LINDA E. HORNER and
KEN B. BARRETT, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of all of the
pending claims: 1-9, 11, 12, 15-20 and 22-28. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
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The claims are directed to a sailboard having a hull, and a sailboard
hull itself. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A sailboard hull having an arrangement for attaching foot
straps and a sail mast attachment arrangement, said sailboard
hull including
a downwardly curved or angled lower planing surface
comprising a lower surface of said board alone or a
downwardly angled or curved surface in combination with a
lower surface of said board, said lower planing surface being
curved or angled to reach a maximum transverse angle of 10° or
greater such that the bottom edge regions of the lower planing
surface are lower than the centerline of the board by at least
three-quarters of an inch, whereby the planing lift to drag ratio
of the hull and effective aspect ratio of the hull are increased
wherein said planing surface between said attachment
arrangement for a front foot strap and said attachment
arrangement for sail mast attachment is limited such that the
planing surface area does not exceed an area of a flat horizontal
surface located at a centerline of said planing surface and 45°
angled surfaces extending from ends of said horizontal surface
to the same depth and location as said downwardly curved or
angled lower planing surfaces.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Kelly 3,289,227 Dec. 6, 1966
Schweitzer 3,487,800 Jan. 6, 1970
Campbell 4,730,568 Mar. 15, 1988
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Boeer1 DE 3422406 Dec. 19, 1985
Zistl2 DE 4332216 Jun. 30, 1994

Claims 1-9, 11, 12, 15-17, 22, 23 and 25-27 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 3.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zistl and Boeer. Ans. 4.
Claims 1, 11, 12, 18, 19 and 24-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kelly, Schweitzer and Campbell. Ans.
4.
Claims 3-7, 15, 17 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kelly, Schweitzer, Campbell and Zistl. Ans. 6.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelly, Schweitzer, Campbell and Boeer. Ans. 7.
The Examiner has indicated that claim 26 no longer stands rejected
under 35 U.S.C. § 112, first paragraph, due to the recitation “2.4 times the
width” but remains rejected under 35 U.S.C. §112, first paragraph, due to the
recitation “30 cm from the rear of said hull.” Ans. 2.
The Examiner has withdrawn the rejection of claims 1-9, 11, 12, 15-
17, 22 and 23 under 35 U.S.C. § 112, second paragraph. Ans. 2.

1 References to Boeer and Zistl are to the translations entered into the record
November 6, 2008.
2 See note 1.
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ISSUES
Since we are unable to determine the subject matter encompassed by
claim 1 without resort to speculation we do not reach the merits of the
rejection of claims 1-9, 11, 12, 15-17, 22, and 23 under 35 U.S.C. § 112,
first paragraph, or the rejection of claims 1, 3-7, 12, 15-17 under 35 U.S.C.
§ 103 at this time. App. Br. 25, 33-38, 41-43.
The Examiner rejected claims 25-27 under 35 U.S.C. § 112, first
paragraph, because there is no basis in the disclosure for the limitation “30
cm from the rear of said hull.” Appellant argues that the limitation as
originally stated, “20 cm from the rear of said hull” was clearly a
typographic error and therefore the change to 30 cm is supported by the
original disclosure. App. Br. 21. Thus, we must determine whether
Appellant has established that the Examiner erred by concluding there is no
support for the limitation “30 cm from the rear of said hull” in the original
disclosure.
Regarding claim 28, Appellant contends that the Examiner’s proposed
combination of Zistl and Boeer would not result in a sailboard hull that
“resists outflow of water from below the sailboard hull.” App. Br. 31.
Appellant also contends that since the ventilation of Boeer’s step is from the
front of the board, Boeer’s step can not reasonably be considered “a
ventilated step behind the location...of the sail mast.” App. Br. 32. In light
of these contentions we must determine whether Appellant has established
that the Examiner erred in concluding the subject matter of claim 28 would
have been obvious over Zistl and Boeer.
Appellant argues claims 18 and 24 under separate headings. However
no substantive arguments are presented for claim 24 that differ from those
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presented regarding claim 18. Appellant argues the shaped portion of Kelly
is not a planning surface and the lift generated by Kelly’s board is produced
by a different mechanism. App. Br. 38. Appellant also argues that it is
impossible to determine the “effective width” of Kelly’s hull since Kelly is
silent regarding the enhanced lift to drag ratio of his board, a performance
measure upon which the effective width depends. App. Br. 39. It is noted
that claims 18 and 24 are included in Appellant’s arguments related to the
alleged distinction between the “sailboard hull” recited in claim 1 and the
“surfboard hull” disclosed in Kelly. App. Br. 33-35. Since, unlike claim 1,
claims 18 and 24 recite a “sailboard apparatus” and not a “sailboard hull”
this argument is not relevant to claims 18 and 24 and is not addressed further
herein. In light of these contentions we must determine whether Appellant
has established that the Examiner erred in concluding the subject matter of
claims 18 and 24 would have been obvious over Kelly, Schweitzer and
Campbell.
Appellant argues that Kelly does not teach the sides of the hull
forming a step as recited in claim 19. App. Br. 39. In light of these
contentions we must determine whether Appellant has established that the
Examiner erred in concluding the subject matter of claims 19 would have
been obvious over Kelly, Schweitzer and Campbell.
Regarding claim 20, although the claim is mentioned on page 6 of the
Answer as being unpatentable over Kelly, Schweitzer, Campbell and Zistl,
we are in agreement with Appellant that the Examiner has not made
apparent any reason why the claimed subject matter would have been
obvious under 35 U.S.C. § 103. Additionally, since claim 26 depends from
claim 20, and therefore contains all the limitations of claim 20, it is also
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unclear how the Examiner could have concluded that the subject matter of
claim 20 would have been obvious over Kelly, Schweitzer, Campbell and
Zistl, while also concluding that the subject matter of claim 26 would have
been obvious over only Kelly, Schweitzer, and Campbell. For these reasons
the Examiner’s rejections of claims 20 and 26 are reversed and are not
discussed further herein.

FINDINGS OF FACT
1. Zistl discloses a sailboard hull with wing-like hydrofoils 1 which Zistl
alleges provides excellent planning properties. Pg. 4, 7; figs. 1B, C.
2. Boeer discloses a sailboard hull 1 having a ledge 5 from which air is
expelled to create a water foam mixture on which the rear part of the
board glides. Entry openings for the air may be provided at the front of
the board or directly above the ledge. Pg. 9-10; fig. 1.
3. “Effective width” is explicitly defined by the Specification to mean: the
width multiplied by the enhanced lift to drag ratio divided by the flat lift
to drag ratio, wherein the flat lift to drag ratio is that for a planing board
with a flat bottom surface and a given surface area and trim angle, and
the enhanced3 lift to drag ratio is the lift to drag ratio for the hull shape of
interest having the same area and trim angle. Spec. 39.
4. Kelly discloses a surfboard hull wherein due to the shape of the hull,
(e.g., Fig. 13) the hull traps the sidewise-displaced water to generate a lift
force which causes the board to rise out of the water, thereby decreasing
drag. Col. 3, ll. 4-13; col. 4, ll. 28-34.

3 The term “effective” on page 39, line 17 should apparently read,
“enhanced.”
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5. Kelly recognizes that compared to a hull having a flat or convex shaped
bottom, a concave shaped hull bottom will increase the lift, thereby
decreasing the wetted surface area which decreases the drag force on the
hull. Col. 4, ll. 3-6, 25-37.
6. In the embodiment depicted in figures 5 and 13, Kelly provides corners
32 having converging portions 34 which confine the water to produce a
downward force F and a reactive lift force R. Col. 3, ll. 4-10.
7. Schweitzer teaches that it is known in the art to modify a surfboard hull
with a sail arrangement.
8. Campbell teaches that footstraps are known in the art.
9. The level of skill in the art of sailboard design is high, requiring an
advanced understanding of fluid dynamics and biomechanics.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). “All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious - the claim becomes indefinite.” In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970). The fact that claim language, including
terms of degree, may not be precise, does not automatically render the claim
indefinite under 35 U.S.C. 112, second paragraph. Instead, it must be
determined whether the specification provides some standard for measuring
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that degree so that one of ordinary skill in the art would understand what is
claimed when the claim is read in light of the specification. Seattle Box Co.,
v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997) citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Claim construction is an
essential element in determining adequacy of the written description. (See
e.g., MPEP § 2163).
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA
1971). The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. The fundamental factual
inquiry is whether the specification conveys with reasonable clarity to those
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skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935
F.2d at 1563-64. When an explicit limitation in a claim is not present in the
written description it must be shown that a person of ordinary skill would
have understood that the description requires that limitation. Hyatt v. Boone,
146 F.3d 1348, 1353 (Fed. Cir. 1998). If the originally filed disclosure does
not provide support for each claim limitation, a new or amended claim must
be rejected under 35 U.S.C. § 112, paragraph 1, as lacking adequate written
description.
35 U.S.C. § 103 forbids issuance of a patent when the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406-407.
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
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Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). An applicant is
entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in
Swinehart:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
439 F.2d at 213. While features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
See, e.g., In re Schreiber, 128 F.3d at 1477-78.
It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new
property or use of a previously known composition, even when that property
and use are unobvious from prior art, can not impart patentability to claims
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to the known composition.”); Titanium Metals Corp. of Am. v. Banner, 778
F.2d 775, 782 (Fed. Cir. 1985) (composition claim reciting a newly
discovered property of an old alloy did not satisfy section 102 because the
alloy itself was not new); In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974)
(intended use of an old composition does not render composition claim
patentable); In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (“[M]ere
statement of a new use for an otherwise old or obvious composition cannot
render a claim to the composition patentable.”); In re Sinex, 309 F.2d 488,
492 (CCPA 1962) (statement of intended use in an apparatus claim failed to
distinguish over the prior art apparatus); In re Hack, 245 F.2d 246, 248
(CCPA 1957) (“the grant of a patent on a composition or a machine cannot
be predicated on a new use of that machine or composition”); In re Benner,
174 F.2d 938, 942 (CCPA 1949) (“no provision has been made in the patent
statutes for granting a patent upon an old product based solely upon
discovery of a new use for such product”).
Minor differences between the prior art and a claimed device may be a
matter of design choice absent evidence to the contrary. See In re Rice, 341
F.2d 309, 314 (CCPA 1965). Where the difference between the claimed
invention and the prior art is the value of some parameter within the claims,
the applicant must show that the particular value is critical, generally by
showing that the claimed value achieves unexpected results relative to the
prior art value. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). It is
not inventive to discover the optimum value of a parameter by routine
experimentation. In re Aller, 220 F.2d 454, 456 (CCPA 1955). However,
before concluding that a claimed value is the product of a routine
optimization, it must be established that the functional relationship between
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the parameter and the result was known in the art. See e.g., In re Antonie,
559 F.2d 618, 620 (CCPA 1977).

ANALYSIS
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection of claims 1-9, 11, 12, 15-17, 22, and 23 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention.
Regarding the limitation recited in claim 1, “whereby the planing lift
to drag ratio of the hull and effective aspect ratio of the hull are increased,”
the Examiner opines that this limitation should not be afforded any weight,
since the Examiner cannot determine what the planing lift to drag ratio of the
hull and effective aspect ratio of the hull are increased relative to. Ans. 5.
Appellant contends that these values are increased relative to the prior art, as
demonstrated in figure 8E. Reply Br. 1. A relative term or a term of degree
within a claim does not render the claim indefinite so long as one of ordinary
skill in the art would understand what is claimed when the claim is read in
light of the specification. The Specification provides that figure 8E shows a
decrease in drag relative to “conventional slalom boards” as speed increases.
Spec. 31. Thus, there is an increase in lift to drag ratio and effective aspect
ratio of Appellant’s hull in comparison to the tested hull. Claim 1, however,
is not limited to require an increase of these values with respect to any
specific hull. Even if the term were interpreted as Appellant suggests, that
these values are increased relative to conventional or prior art hulls, given
the variety of prior art hulls in existence, there would still be no standard for
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determining what the planing lift to drag ratio of the hull and effective aspect
ratio of the hull are increased relative to. Thus, one of ordinary skill in the
art would be unable to ascertain the scope of claim 1.
Additionally regarding claim 1, while the Examiner and Appellant
appear to agree that the limitation:
wherein said planing surface between said attachment
arrangement for a front foot strap and said attachment
arrangement for sail mast attachment is limited such that the
planing surface area does not exceed an area of a flat horizontal
surface located at a centerline of said planing surface and 45°
angled surfaces extending from ends of said horizontal surface
to the same depth and location as said downwardly curved or
angled lower planing surfaces

serves to exclude deep-V hulls (App. Br. 27-28; Ans. 2), this limitation also
renders claim 1 indefinite. Absent any constraint on the width of the
reference surface, the reference surface may have an infinite number of
possible areas. It is unclear how a comparison of the claimed hull to such an
unconstrained parameter can serve to limit the apparatus defined by claim 1.

The rejection of claims 1-9, 11, 12, 15-17, 22, and 23 under 35 U.S.C. § 112
first paragraph and the rejection of claims 1, 3-7, 12, 15-17 under 35 U.S.C.
§ 103 are reversed.
We do not reach the merits of the rejection of claims 1-9, 11, 12, 15-
17, 22, and 23 under 35 U.S.C. § 112, first paragraph, or the rejection of
claims 1, 3-7, 12, 15-17 under 35 U.S.C. § 103 at this time. App. Br. 25, 33-
36. Before a proper review of the rejection under 35 U.S.C. § 112, first
paragraph, or 35 U.S.C. § 103 can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
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without resort to speculation. Since claim 1 fails to satisfy the requirements
of the second paragraph of 35 U.S.C. § 112 we are constrained to reverse,
pro forma, the rejection under 35 U.S.C. § 112, first paragraph, and 35
U.S.C. § 103. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language.); See also In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970) (“If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious-the claim becomes
indefinite.”).

The rejection of claims 25-27 under 35 U.S.C. §112, first paragraph is
affirmed.
Regarding the rejection of claims 25-27 under 35 U.S.C. § 112, first
paragraph, a person of ordinary skill would not have understood the term
“20 cm” in the original disclosure to mean “30 cm” as Appellant suggests.
App. Br. 21; Reply Br. 2-3. The mathematical proof submitted with the
remarks filed January 12, 2007 expresses the width ratio solely as a function
of the dimension in question, d and the radius of circle BC. This proof relies
heavily upon the relationship: BC=BD=BA, which hold true only for a
circle. Thus, the expressed relationship does not clearly and intuitively hold
for generally elliptical shapes, i.e., independent of the eccentricity of the
ellipse, as Appellant suggests. Appellant has not established that the change
to 30 cm is supported by the original disclosure.

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The rejection of claim 28 under 35 U.S.C. § 103(a) is affirmed
The subject matter of claim 28 involves the combination of familiar
elements to yield predictable results. The Examiner reasonably concluded
that since the claimed apparatus does not structurally distinguish over the
prior art, the prior art would be capable of performing the claimed function
of “resist[ing] outflow of water from below the sailboard hull.” In order to
perform this function all that is required is a surface projecting vertically
downwardly into the water. Zistl discloses a hull having wing-like
hydrofoils which have such a surface. See Fact 1. The wing-like hydrofoils
are read by the Examiner as the claimed “winglets”—the structure
responsible for resisting outflow. Reciting a new property or use for a
known apparatus does not impart patentability to claims directed to that
known apparatus. Where, as here, the Examiner reasonably believes the
prior art would perform a recited function that Appellant asserts is critical
for establishing the patentability of the claimed subject matter, the burden
shifts to Appellant to establish that the prior art does not posses the relied
upon characteristic. The fact that Zistl and Boeer do not specifically
mention the claimed function of “resist[ing] outflow of water from below the
sailboard hull,” does not, without more, establish that the subject matter
shown by Zistl and Boeer does not perform the claimed function.
Regarding the “ventilated step” limitation, firstly, there is no
requirement in the claims that the ventilation intake opening must be located
behind the arrangement for attaching the sail mast, only the step itself. The
embodiment depicted in figure 1 of Boeer meets this requirement. Secondly,
Boeer additionally discloses that the intake may also be positioned directly
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above the ledge, rendering Appellant’s interpretation of Boeer inaccurate.
See Fact 2.

The rejection of claims 18, 19, 24, 25 and 27 under 35 U.S.C. § 103(a) is
affirmed
Since the Specification explicitly defines the term, “effective width,”
in construing claims 18 and 24, the term must be interpreted in accordance
with that definition. The effective width is based upon the width of the hull,
and the improvement in the lift to drag ratio of the hull in comparison to a
flat hull having the same surface area. Fact 3. The improvement in the lift
to drag ratio of the hull is a performance measure of the hull. Reply Br. 4.
Contrary to Appellant’s assertion Kelly describes the desirability of
increasing lift while decreasing drag, and does so by the same mechanism as
Appellant—planing. See Fact 4; Kelly fig. 13; App. Br. 38. The exact
location of Kelly’s shaped portion is dependent largely upon the anticipated
position of the rider and the anticipated shape of the water’s surface. See
Kelly, col. 2, ll. 39-62. One of ordinary skill in the art would not interpret
Kelly’s teachings as confining the shaped portions of the board to any
particular location but would instead recognize that the shaped portion of the
hull may be adjusted to compensate for changes in these variables.
Kelly does not provide specific values for the variables upon which
the “effective width” depends. App. Br. 39. Kelly’s “effective width” is
dependent upon the particular geometry and dimensions selected for Kelly’s
board. One of ordinary skill in the art would not interpret Kelly’s inventive
concept as limited to any particular geometry or dimension. Instead, one of
ordinary skill would recognize that Kelly’s invention may be embodied in
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boards having a wide range geometries and dimensions. Cf. e.g., Kelly figs.
5-11. Having recognized that the lift, drag and width of the board will affect
the performance of the board, (See Facts 4 and 5) one of ordinary skill in the
art would have been able to optimize these variables in order to achieve the
desired performance. Thus, the fact that Kelly does not disclose specific
values for the design parameters that determine the “effective width” of the
board does not establish that the claimed parameters are not the product of a
routine optimization that would have been obvious to one of ordinary skill in
the art.
Appellants alleged unexpected results demonstrate an increase in lift
to drag ratio as compared to conventional hulls, and not to the hull of Kelly.
Reply Br. 4; Spec. fig. 4. It is well settled, however, that an applicant
relying on comparative tests to rebut a prima facie showing of obviousness
must compare his claimed invention to the closest prior art. See In re
Deblauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Furthermore, Kelly teaches
that if a flat hull bottom were modified to include one of the concave shapes
depicted in figures 5-11, an increase in the lift to drag ratio should be
expected. See Fact 5.
Regarding claim 19, Appellant has not proffered any reason why the
claimed sides of the hull forming a step would exclude Kelly’s corners 32.
App. Br. 39; Ans. 9.
No separate arguments are presented regarding the rejection of claims
25 and 27 under 35 U.S.C. §103(a).

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CONCLUSIONS OF LAW
We do not reach the merits of the rejection of claims 1-9, 11, 12, 15-
17, 22, and 23 under 35 U.S.C. § 112 first paragraph or the rejection of
claims 1, 3-7, 12, 15-17 under 35 U.S.C. § 103 at this time. Appellant has
not established that a person of ordinary skill would have understood 20 cm
in the original disclosure to mean 30 cm. Appellant has not established that
the Examiner erred by concluding the subject matter of claim 28 would have
been obvious over Zistl and Boeer. Appellant has not established that the
Examiner erred by concluding that the subject matter of claims 18, 19 and
24 would have been obvious over Kelly, Schweitzer and Campbell.

DECISION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 1-9, 11, 12, 15-17, 22, and 23 under 35 U.S.C.
§ 112 second paragraph. We therefore reverse pro forma the Examiner’s
rejection of claims 1-9, 11, 12, 15-17, 22, and 23 under 35 U.S.C. § 112 first
paragraph and the Examiner’s rejection of claims 1, 3-7, 12, 15-17 under 35
U.S.C. § 103(a).
The Examiner’s rejection of claims 25-27 under 35 U.S.C. § 112, first
paragraph, is affirmed. The Examiner’s rejection of claim 28 under 35
U.S.C. § 103(a) as being unpatentable over Zistl and Boeer is affirmed. The
Examiner’s rejections of claims 18, 19, 24, 25, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Kelly, Schweitzer, and Campbell is
affirmed. The Examiner’s rejection of claim 20 as being unpatentable over
Kelly, Schweitzer, Campbell and Zistl is reversed and the Examiner’s
Appeal 2009-010191
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19
rejection of claim 26 as being unpatentable over Kelly, Schweitzer, and
Campbell is also reversed.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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Application 10/157,875

20
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

LV

WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190