Ex Parte Lasky

Board of Patent Appeals and Interferences

Jan 29, 2003

04394390 (B.P.A.I. Jan. 29, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARVIN LASKY and LESTER F. WHICKER
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Appeal No. 2003-0209
Application No. 04/394,390
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ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claim 11. Claims 1 through 10, all of the other
claims remaining in this application, stand allowed. Claim 12
has been canceled.
Appellants' invention relates to a submarine towed
instrument positioning device and more particularly to a device
to tow sound receiving apparatus by a submarine while cruising in
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Application No. 394,390
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water for measuring near-sound noise generation of the submarine
which may then by analyzed in an attempt to provide a more quiet
ship. Of importance to appellants is to provide a towed device
(12, 30, or 60) that is positionable in the water with respect to
the towing vehicle and which allows the towed array to be
positioned in a spaced manner from the submarine and
substantially parallel to the line of submarine travel. A
portion of the mechanism for changing positioning of the towed
device is contained within the housing of the device and includes
means (Figs. 3-5 or Figs. 6-8) for varying the relative position
between the center of buoyancy and the center of gravity of the
housing to dispose the wing (33 or 65) in a given position.
Claim 11 reads as follows:
11. A towed vehicle for positioning a hydrophone array about a
submarine, comprising:
(a) towing means connecting said submarine and vehicle;
(b) means on said vehicle for generating hydrodynamic forces
as the vehicle is pulled through water; and
(c) means for selectively controlling the attitude of said
vehicle whereby the hydrophone array may be positioned
substantially parallel to the axis of the submarine at any radial
position of the vehicle about the submarine.

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The sole prior art reference relied upon by the examiner in
rejecting claim 11 is:
Anderson 3,125,980 Mar. 24, 1964
Claim 11 stands rejected under either 35 U.S.C. § 102(b) or
35 U.S.C. § 103(a) as being unpatentable over Anderson.
According to the examiner, Anderson
discloses a towed vehicle comprising towing means,
means on said vehicle for generating hydrodynamic
forces and means for selectively controlling the
attitude of said vehicle. The "whereby" clause is
merely a functional statement that recites no structure
or means and is of no assistance in patentably defining
over a reference. A submarine, as well as being
submersible is a ship that proceeds on the surface
(answer, page 2).
Rather than reiterate the examiner's full discussion of the
above-noted rejection and the conflicting viewpoints advanced by
the examiner and appellants regarding the rejection, we make
reference to the examiner's answer (Paper No. 9, mailed December
10, 1965) for the reasoning in support of the rejection, and to
appellants' brief (Paper No. 8, filed October 22, 1965) for the
arguments thereagainst.

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Application No. 394,390
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OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art reference, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determination which follows.
Having reviewed and evaluated the applied Anderson
reference, we are of the opinion that the examiner's position in
1965 regarding the purported anticipation or obviousness of claim
11 on appeal improperly disregarded the details of the "means for
selectively controlling" set forth in clause (c) of appellants'
claim. In that regard, we do not share the examiner's view that
the "whereby" clause associated with the "means for selectively
controlling" of claim 11 can be disregarded, because, contrary to
the examiner's position, we find that the "whereby" clause
imposes certain structural limitations on the "means for
selectively controlling" that are not found in Anderson.
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More particularly, we consider that the examiner has failed
to properly interpret the "means for selectively controlling" of
appellants' claim 11 in accordance with 35 U.S.C. § 112, sixth
paragraph. As was made clear in In re Donaldson Co. Inc.,
16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994), the
sixth paragraph of 35 U.S.C. § 112 permits an applicant to
express an element in a claim for a combination as a means or
step for performing a specified function without the recital of
structure, materials or acts in support thereof, and mandates
that such a claim limitation "shall be construed to cover the
corresponding structure, materials, or acts described in the
specification or equivalents thereof."
In this case, it is clear to us, as has been urged by
appellants in their brief (pages 3-4), that the "means for
selectively controlling the attitude of said vehicle" (answer,
page 2) pointed to by the examiner in Anderson are not the same
(structurally or functionally) as those described in appellants'
specification, and it is also clear that the examiner has not
attempted to articulate any reasoning as to why the structure of
the applied Anderson patent should be considered to be an
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equivalent of that which is set forth in appellants'
specification and claims.
The azimuth control system of the towed vehicle (10) of
Anderson is used to position the towed vehicle beneath and behind
a self-propelled towing vehicle by means of a tow line in such a
manner that variations in the azimuth heading of the towing
vehicle will cause the towed vehicle (10) to follow substantially
directly astern of the towing vehicle. The control system of
Anderson is not capable of positioning a hydrophone array
substantially parallel to the axis of a submarine "at any radial
position of the vehicle [towed vehicle] about the submarine," as
required in claim 11 on appeal.
Since we have determined that the teachings and suggestions
which would have been fairly derived from Anderson would not have
anticipated the subject matter of claim 11, or have made the
subject matter of claim 11 obvious to one of ordinary skill in
the art at the time of appellants' invention, we must refuse to
sustain the examiner's rejection of that claim.
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In light of the foregoing, the decision of the examiner to
reject claim 11 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2003-0209
Application No. 394,390
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ASSOCIATES COUNSEL (PATENTS)
CODE 3008.2
NAVAL RESEARCH LABORATORY
WASHINGTON, DC 20375-5325