Ex Parte Madden et alDownload PDFBoard of Patent Appeals and InterferencesSep 18, 200911278021 - (D) (B.P.A.I. Sep. 18, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LEWIS D. MADDEN, STEPHEN L. BAILEY, and ROGER B. STREETER ____________ Appeal 2009-002974 Application 11/278,021 Technology Center 3600 ____________ Decided: September 18, 2009 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and MICHAEL W. O'NEILL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lewis D. Madden et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2009-002974 Application 11/278,021 2 SUMMARY OF DECISION We AFFIRM-IN-PART. THE INVENTION The Appellants’ claimed invention is a multi-hulled vessel for ice breaking and a method of ice-breaking. Spec. 1, para. 0007. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A multi-hulled vessel comprising two side hulls that are connected by struts to a center hull, wherein said side hulls are at least partially submerged while said vessel is underway, and further wherein each of said two side hulls comprises a ridge that is disposed on an upper surface thereof, wherein: (a) said side hulls extend a first distance forward of a leading edge of said struts; (b) said ridge extends for at least a portion of said first distance from a bow of said side hulls toward said leading edge of said struts; (c) when said vessel is underway in water having a surface layer of ice, a major portion of a length of said ridge is brought into contact with a bottom surface of said ice; and (d) said major portion of said ridge is sufficient to function as a force concentrator for concentrating a weight of said ice along said ridge in order to fracture said ice. Appeal 2009-002974 Application 11/278,021 3 THE EVIDENCE The Examiner relies upon the following evidence: Lang Re. 33,359 Oct. 2, 1990 Murthy1 GB 2 010 201 A Aug. 3, 1977 THE REJECTIONS The Appellants seek review of the following rejections by the Examiner: 1. Rejection of claims 1, 3-5, and 8 under 35 U.S.C. § 102(b) as anticipated by Murthy. 2. Rejection of claims 6 and 9-12 under 35 U.S.C. § 103(a) as unpatentable over Murthy. 3. Rejection of claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Murthy and Lang. ISSUES Rejection based on anticipation by Murthy The Examiner found that claims 1, 3-5, and 8 are anticipated by Murthy. Ans. 3-4. The Appellants contend that Murthy’s vessel does not meet the limitation of claim 1 that “when said vessel is underway in water having a surface layer of ice, a major portion of a length of said ridge is brought into contact with a bottom surface of said ice,” because cutting edge 7 of Murthy’s device abuts the undersurface of the ice at a single point. App. Br. 13-15. 1 Throughout the Appellants’ Brief “Murthy” is recited as “Murphy.” Appeal 2009-002974 Application 11/278,021 4 The Appellants contend that Murthy does not disclose a ridge on the upper surface of a side hull as required by claim 5. App. Br. 15. The Appellants also contend that Murthy does not disclose concentrating the force along a line that is defined by the ridge on the underside of the ice, and breaking the ice along that line as required by claim 5. App. Br. 15-16. The Appellants contend that because Murthy teaches the submerged hulls remain completely below the ice to avoid contact with the ice, Murthy does not disclose abutting the hulls against the undersurface of the ice as required by claim 8. App. Br. 16. The Appellants also contend that Murthy does not disclose breaking the ice in part due to its own weight as required by claim 8. App. Br. 16. Rejection based on obviousness over Murthy The Examiner concluded the subject matter of claims 6 and 9-12 would have been obvious over Murthy. Ans. 5. Claims 6 and 9 depend from claims 5 and 8, respectively, and call for the operation of abutting the ridge against the undersurface of the ice to include adjusting trim to provide a net upward trim angle. The Appellants argue that Murthy “does not suggest providing a net upward trim angle so as to abut the cutting edge or hull against the undersurface of the ice,” as required by claims 6 and 9. App. Br. 17. The Appellants also assert that claims 10-12 are allowable for the same reasons asserted against the rejection of claim 8. App. Br. 16.2 2 Contrary to the Appellants’ assertion, claim 11 does not depend from claim 8, but rather, because claim 11 depends from claim 5, we apply the Appellant’s arguments made against claim 5 to claim 11. Appeal 2009-002974 Application 11/278,021 5 Rejection based on obviousness over Murthy and Lang The Examiner concluded the subject matter of claims 2 and 7 would have been obvious over Murthy and Lang. Ans. 5-6. Claims 2 and 7, depend from claims 1 and 5, respectively, and call for two structures for coupling the two side hulls to a center hull, wherein, at a waterline, the struts are widest near a midpoint along a length of the struts. The Appellants contend that Lang’s strut does not have the claimed aft-tapering profile because it has the same width along most of its length. App. Br. 17-18. In light of these findings and contentions, the issues presented by this appeal are: Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses that a major portion of the length of a ridge is brought into contact with a bottom surface of the ice? Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses a ridge on the upper surface of a side hull? Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses concentrating the force along a line that is defined by the ridge on the underside of the ice, and breaking the ice along that line? Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses abutting the hulls against the undersurface of the ice? Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses breaking the ice in part due to its own weight? Have the Appellants demonstrated the Examiner erred in finding that Murthy discloses use of a net upward trim angle to abut the cutting edge or hull against the undersurface of the ice? Appeal 2009-002974 Application 11/278,021 6 Have the Appellants demonstrated the Examiner erred in concluding Lang discloses a strut with the claimed profile? FINDINGS OF FACT We find that the following enumerated facts are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. The Appellants’ Specification does not provide a lexicographic definition of “major” as used in claim 1. Spec. passim. 2. The word “major” is commonly understood to mean “constituting the majority: said of a part, etc.” The word “majority” is commonly understood to mean “the greater part.” Webster’s New Universal Unabridged Dictionary (Deluxe 2d ed. 1983) (“major,” entry 1, def 3) (“majority,” entry 1, def. 1). 3. Murthy discloses a semi-Submerged Air Cushion Vehicle (SSACV) with built-in capacity for ice-breaking. The SSACV is comprised of: flexible seals at the bow and stern mounted under a large deck area, and deep struts along the sides of the deck, having long, streamlined, submerged hulls attached at the lower ends. Murthy, 1:21-40; fig. 1. 4. The bow air cushion 14 and stern air cushion 15, are each bounded by a flexible seal. Manipulation of the cushions 14 and 15, independently, or in unison, can vary the pitch (nose up or nose down) of the vehicle, or heave the vehicle (raise or lower relative to the waterline). Air cushion vehicles, such as a SSACV, can break Appeal 2009-002974 Application 11/278,021 7 ice of moderate thickness, with the air cushion acting to break the ice immediately ahead of the vehicle. Murthy, 1:28-30, 35-39, 48- 52, 54-73; 1:122-2:6; fig. 1.3 See also 2:45-53 (regarding forcibly oscillating the vehicle). 5. The side struts 6 have sufficient depth so that the upper surface of the submerged hulls 9 may remain in the water below the ice. Murthy, 1:94-98; fig. 1. 6. The cutting edges 7 of the side struts 6 are located on the forward part of the side struts 6 and on the bow section of the submerged hulls 9. The cutting edges 7 have a flared leading edge suitable for ice cutting. The cutting edges 7 form a horizontal V-shape, sloping downward and toward the stern of the vehicle from the waterline, then sloping downward and toward the bow of the vehicle. Murthy, 1:66-69, 81-85; 2:7-10; fig. 1. 7. Murthy discloses that the cutting edges 7 act in conjunction with the ice-breaking capacity of the bow air cushion 14. Murthy contrasts that during forward motion of the vehicle, conventional ice breakers cut ice like a knife, while the SSACV cuts ice more like a nutcracker in that the horizontal V-shape of the cutting edges 7 cuts the ice simultaneously “in the downward direction on the upper surface and in the upward direction on the lower surface.” Murthy, 1:69-73; 2:45-53, 67-79; fig. 1. 8. Murthy describes that ice cutting is further improved by supplementing the forward motion of the vessel with adjustments to 3 Murthy’s numbers in figure 1 do not correspond to the numbers in the description. Appeal 2009-002974 Application 11/278,021 8 pitch and heave using the air cushions 14 and 15. For example, Murthy discloses pitch trim adjustments to allow a component of the weight of the vehicle to facilitate ice cutting, or to achieve optimum draught for ice breaking. Murthy, 2:10-16, 45-50, 76-79; fig. 1. 9. Beyond supplementing ice cutting capability during forward motion, Murthy discloses that the ability to forcibly oscillate the vehicle is useful should the vehicle become embedded in ice. Murthy, 1:122- 2:6; 2:45-53; fig. 1. 10. Lang discloses struts that are tapered at the front and rear ends to reduce drag. Lang, col. 4, ll. 27-29. Between the tapered ends, the strut has substantially the same width along its length. Lang, fig. 2. PRINCIPLES OF LAW We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Appeal 2009-002974 Application 11/278,021 9 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Section 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 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS Rejection of claims 1, 3-5, and 8 under 35 U.S.C. § 102(b) as anticipated by Murthy Claims 1, 3, and 4 Independent Claim 1 and its dependent claims 3 and 4, contain the limitation that when the vessel is underway in water with a surface layer of ice, “a major portion of a length” of the ridge contacts the bottom surface the ice. The Appellants’ Specification does not define “major,” and a common Appeal 2009-002974 Application 11/278,021 10 meaning for the term is “majority” (Facts 1, 2). Further, “majority” is commonly understood to mean “the greater part” (Fact 2). A person of ordinary skill in the art would interpret this limitation to require the greater part of the ridge to contact the bottom surface of the ice. We agree with the Appellants that Murthy does not disclose this limitation. App. Br. 13-15. Murthy discloses a vessel for ice-breaking, comprised of: flexible seals (cushions) at the bow and stern mounted under a large deck area, and deep struts along the sides of the deck, having long, streamlined, submerged hulls attached at the lower ends (Fact 3). The bow and stern cushions break the ice ahead of the vessel in conjunction with the ice cutting edges at the leading edge of the struts (Facts 4, 6, 7). The ice cutting edges of the struts form a horizontal V-shape that cuts the ice simultaneously downwardly on the upper surface and upwardly on the lower surface (Facts 6, 7). Further, the cushions can alter the pitch of the vessel or forcibly oscillate the vessel to assist in ice cutting (Fact 8). In theory, the intersection of a line (the cutting edge of the strut) and a plane (the bottom surface of the ice) is a single point, unless the line is parallel to the plane; however, actual conditions differ from this oversimplification. For example, the bottom surface of the ice is not usually a perfect horizontal plane, some bending and displacement of the bottom surface of the ice occurs during ice cutting operations, and the exact angle of the lower portion of the horizontal V-shape of the cutting edges of Murthy is unknown. The bottom surface of the ice where ice breakers are utilized is generally horizontal. Further, the lower portion of the horizontal V-shape of the cutting edges of Murthy cannot be horizontal, but rather must be at angle to the bottom surface of the ice in order to provide nutcracker-like cutting Appeal 2009-002974 Application 11/278,021 11 (simultaneous force downward on the upper surface and upward on the lower surface of the ice). Given this, we conclude the greater weight of the evidence is that, at most, a small portion, and not the greater part, of the length of the cutting edges of Murthy, will contact the bottom portion of the ice. Thus, Murthy does not set forth each element of claim 1, and Murthy does not anticipate claim 1, or its dependent claims 3 and 4. Claim 5 Independent claim 5 is a method claim containing the limitation of providing a ridge on an upper surface of a side hull of the vessel. The Appellants’ argument that Murthy does not disclose the claimed ridge because Murthy’s strut “completely covers the upper surface of lower hull 9” is based on an incorrect claim interpretation. App. Br. 15 (referring to the argument at App. Br. 12). Claim 5 does not prohibit the ridge from completely covering the side hull; rather, it simply requires a ridge on the side hull. Murthy discloses a ridge (cutting edge 7 with an edge suitable for ice cutting), mounted on the bow section of the side hulls (submerged hulls 9) (Fact 6, parenthetical nomenclature to Murthy). Claim 5 also contains the step of “providing a force concentrator on an undersurface of said ice by abutting said ridge against said undersurface of said ice, wherein said weight of said ice concentrates along a line defined by said ridge.” The Appellants’ Specification describes that as the hulls move forward under the ice, force concentrates along the ridge and the ice breaks along the line of the ridge. Spec. 3, para. 0019; fig. 2. Neither claim 5, nor the Appellants’ Specification describes the length of the line defined by the ridge. Spec. passim. A person of ordinary skill in the art would interpret claim 5 to include the requirement of concentrating force along a Appeal 2009-002974 Application 11/278,021 12 line of unspecified length on the undersurface of the ice, and breaking the ice along that line. We cannot agree with the Appellants that Murthy does not disclose concentrating force along a line on the undersurface of the ice, and breaking the ice along that line. App. Br. 15. While in the analysis of claims 1, 3, and 4, supra, we determined that the bottom surface of the ice does not contact a major portion of the cutting edge of Murthy, in claim 5, all that is required is contact along a line of unspecified length. Given the uncertainties discussed in the analysis of claims 1, 3, and 4, supra, we find the greater weight of the evidence is that the cutting edges of Murthy would contact the undersurface of the ice along a line defined by the cutting edge (ridge). Claim 8 The Appellants’ contention that Murthy does not disclose abutting the hulls against the undersurface of the ice as claimed, is based on an incorrect interpretation of claim 8. App. Br. 16. While claim 8 recites abutting the hulls against the undersurface of the ice, the Appellants’ Specification defines the ridge as part of the hull (“the upper surface of the bow of side hulls 102 incorporate ridge 220” Spec. para. 0018). Because the side hull incorporates the ridge, if the ridge abuts the undersurface of the ice, by definition, the side hull also abuts the undersurface of the ice. Likewise in Murthy, the ridge (cutting edge 7) is located on the upper bow section of the side hull (submerged hull 9) (Fact 6, parenthetical nomenclature to Murthy). While Appellants are correct that Murthy discloses the hulls remain in the water below the ice (Fact 5), the Appellants have defined the ridge as part of Appeal 2009-002974 Application 11/278,021 13 the hull, and Murthy’s ridge contacts the undersurface of the ice (Fact 7). The Appellants’ argument fails to demonstrate error by the Examiner. The Appellants’ argument that Murthy’s vessel breaks ice downwardly, but not upwardly as claimed, is unconvincing. App. Br. 16. First, the claim does not directly require breaking the ice upwardly, but rather requires breaking the ice in part due to its own weight. Second, as the Examiner correctly points out, Murthy discloses that the vessel can cut ice by heaving, and in an upward heave, the ridge will force the ice upward so that it breaks in part due to its own weight (Facts 4, 7-9). See Ans. 13. Rejection of claims 6 and 9-12 under 35 U.S.C. § 103(a) as unpatentable over Murthy Claims 6 and 9 We are unconvinced by the Appellants’ argument that Murthy “does not suggest providing a net upward trim angle so as to abut the cutting edge or hull against the undersurface of the ice.” App. Br. 17. In Reponse to Argument, the Examiner states that Murthy suggests providing an upward trim angle to abut the cutting edge against the underside of the ice by disclosing that the vessel may be pitched nose up to secure an optimum draught for ice breaking. Ans. 15 (citing to Murthy, 2:10-16). We agree. Murthy discloses use of the bow and stern cushions to adjust pitch, both nose up and nose down, for optimum ice breaking draught (Fact 8). Claims 10 and 12 Claims 10 and 12 depend, directly or indirectly, from independent claim 8. The Appellants assert that claims 10 and 12 are allowable for the same reasons asserted against the rejection of claim 8. App. Br. 16. For the Appeal 2009-002974 Application 11/278,021 14 reasons explained in the analysis of claim 8, supra, those arguments are unconvincing here as well. Claim 11 Claim 11 depends indirectly from independent claim 5. The Appellants’ arguments against claim 5 are unpersuasive here as well, for the reasons explained in the analysis of claim 5, supra. Rejection of claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Murthy and Lang Claim 2 Because claim 2 depends from independent claim 1, and we concluded that the Appellants have demonstrated error in the rejection of claim 1, supra, we likewise conclude the Appellants have demonstrated error in the rejection of claim 2. The Examiner relies on Lang for teaching the claimed tapering of the struts and has not relied on Lang to cure the deficiency that we found in Murthy with respect to claim 1. Claim 7 Claim 7 depends from independent claim 5, and contains the limitation that the struts are “widest near a midpoint along of a length of said struts, tapering to a smaller width toward the stern thereof.” The Appellants’ Specification states that the struts are widest near the midpoint, and show “an aft-tapering profile after the vessel is trimmed by the stern.” Spec. 4, para. 0021. We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though Appeal 2009-002974 Application 11/278,021 15 understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). The challenge is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Claim 7 requires that the strut be widest, at the midpoint of the length of the strut, in the sense that no point along the length of the strut is wider than the width at the midpoint. Nothing in the claim, or the Specification, warrants a narrower interpretation that all other points along the length of the strut must have a lesser width than the width at the midpoint. In other words, the point at the midpoint of the length of the strut may be the widest point even if other points along the length of the strut have an equal, but not greater width. Giving the claim the broadest reasonable interpretation in light of the Specification, claim 7 requires that no point be wider than the width at the midpoint along the longitudinal axis of the strut. Regarding the taper limitation, neither the claim, nor the Specification define the taper as beginning at the midpoint and running towards the stern; rather, the broadest reasonable interpretation is that the taper must occur somewhere between the midpoint of the length and the endpoint of the strut towards the stern. Lang discloses a strut that is widest at its midpoint, because no other point along the length is greater in width (Fact 10). Lang’s strut tapers between the midpoint of the length and the endpoint of the strut towards the Appeal 2009-002974 Application 11/278,021 16 stern (Fact 10). Thus, the Appellants’ contention that Lang’s strut does not have the claimed aft-tapering profile, because it has the same width along most of its length, is unconvincing. See App. Br. 17-18. CONCLUSIONS The Appellants have demonstrated the Examiner erred in finding that Murthy discloses that a major portion of the length of a ridge is brought into contact with a bottom surface of the ice. The Appellants have failed to demonstrate that the Examiner erred in finding that Murthy discloses a ridge on the upper surface of a side hull. The Appellants have failed to demonstrate that the Examiner erred in finding that Murthy discloses concentrating the force along a line that is defined by the ridge on the underside of the ice, and breaking the ice along that line. The Appellants have failed to demonstrate that the Examiner erred in finding that Murthy discloses abutting the hulls against the undersurface of the ice. The Appellants have failed to demonstrate that the Examiner erred in finding that Murthy discloses breaking the ice in part due to its own weight. The Appellants have failed to demonstrate that the Examiner erred in finding that Murthy discloses use of a net upward trim angle to abut the cutting edge or hull against the undersurface of the ice. The Appellants have failed to demonstrate that the Examiner erred in concluding Lang discloses a strut with the claimed profile. Appeal 2009-002974 Application 11/278,021 17 DECISION We REVERSE the Examiner’s decision to reject claims 1-4. We AFFIRM the Examiner's decision to reject claims 5-12. 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 LV Lockheed Martin c/o DEMONT & BREYER, LLC 100 COMMONS WAY, Ste. 250 HOLMDEL, NJ 07733 Copy with citationCopy as parenthetical citation