Ex Parte Madden et al

Board of Patent Appeals and Interferences

Sep 18, 2009

11278021 - (D) (B.P.A.I. Sep. 18, 2009)

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).

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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.

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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.”
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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.
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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?
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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
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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.
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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)).
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“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
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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
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(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
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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
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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
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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
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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
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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.

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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

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