Ex Parte Magnell

Patent Trial and Appeal Board

May 5, 2017

13403713 (P.T.A.B. May. 5, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/403,713 02/23/2012 Bruce A. Magnell WHGP-001-101 9605
75436 7590 05/05/2017
MORSE, BARNES-BROWN & PENDLETON, P.C.
ATTN: IP MANAGER
CityPoint
230 Third Avenue, 4th Floor
WALTHAM, MA 02451
EXAMINER
NGUYEN, LAURA N
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
05/05/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE A. MAGNELL
Appeal 2017-000436
Application 13/403,713
Technology Center 2600
Before JOSEPH L. DIXON, JOHN A. EVANS, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—12 and 19—25. App. Br. I.1 Claims 13—18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed October 22, 2015, (2) the Advisory Action (“Adv. Act.”) mailed
January 11, 2016, (3) the Appeal Brief (“App. Br.”) filed May 17, 2016, (4)
the Examiner’s Answer (“Ans.”) mailed August 23, 2016, and (5) the Reply
Brief (“Reply Br.”) filed September 27, 2016.
Appeal 2017-000436
Application 13/403,713
THE INVENTION
Appellant’s invention is an underwater-telemetry system. Spec. 12.
In particular, the invention is designed to maintain its position in strong
currents without the vulnerability and expense of a surface-dwelling vehicle,
moored buoy, or other similar devices. Id. 19.
Claim 1 is reproduced below with our emphasis:
1. A submersible telemetry system, comprising:
a submersible telemetry platform, comprising:
a body having a front end, a mid-section, and a tail
end at an opposite end from the front end;
at least one lift generating surface coupled to the
body proximal the mid-section and configured in such a
way as to provide lift to the body when a fluid flows across
the lift generating surface;
at least one attitude control surface coupled to the
body proximal the tail end and distal from the at least one
lift generating surface, the at least one attitude control
surface configured to control a pitch of the body in such a
way as to modify the lift on the body between a negative
lift and a positive lift;
a control device coupled to the at least one attitude
control surface and configured to control the at least one
attitude control surface; and
telemetry equipment coupled to the body and
configured for wireless communication with at least one
remote device;
a base configured to be anchored at a subsurface location;
and
a tether coupling the body with the base in such a way that
the body has complete ffeedom-of-movement about a common
center point at the base; wherein the telemetry platform is
controllable to rise from an entirely submersed position within a
body of liquid to a surfaced position at a surface of the body of
liquid by adjustment of a ramp angle of the at least one attitude
control surface without requiring powered forward propulsion of
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Application 13/403,713
the telemetry platform and without requiring a change in
buoyancy of the telemetry platform.
THE REJECTIONS
The Examiner relies on the following as evidence:
Ortlieb et al. US 3,688,730 Sept. 5, 1972
(“Ortlieb”)
Stillman Jr. US 3,818,523 June 25, 1974
(“Stillman”)
Langrock US 4,546,721 Oct. 15, 1985
Miller US 5,971,668 Oct. 26, 1999
Asfar et al. US 7,290,496 B2 Nov. 6, 2007
(“Asfar”)
Hunt US 2010/0332041 Al Dec. 30, 2010
Bolin US 2011/0109090 Al May 12, 2011
Claims 1, 3—7, 11, and 19-25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ortlieb, Stillman, and Bolin. Final Act. 2—8.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ortlieb, Stillman, Bolin, and Miller. Final Act. 8—9.
Claims 8, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ortlieb, Stillman, Bolin, and Hunt. Final Act. 9-10.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ortlieb, Stillman, Bolin, and Langrock. Final Act. 10.
THE REJECTION OVER ORTLIEB, STILLMAN, AND BOLIN
Contentions
In the proposed combination of Ortlieb, Stillman, and Bolin, the
Examiner finds that Ortlieb’s underwater vessel lacks “at least one lift
generating surface coupled to the body proximal the mid-section.”
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Application 13/403,713
Final Act. 3 (emphasis omitted). The Examiner, however, finds that
Stillman teaches this feature in concluding that claim 1 would have been
obvious. Id. at 4—5. According to the Examiner, one of ordinary skill would
have added Stillman’s teachings to Ortlieb because doing so would generate
additional lift and would have been obvious to try. Ans. 2-4.
Appellant argues that the Examiner has not provided an adequate
rationale for adding lift-generating surfaces from the body of Ortlieb’s
vessel. App. Br. 14—16. According to Appellant, Ortlieb criticizes the
claimed solution and offers an alternative design. Id. at 14—15. In
Appellant’s view, the Examiner has not shown why one of ordinary skill in
the art would have combined the references in view of Ortlieb’s criticism
and disparagement. Id.
Issue
Has the Examiner supported the obviousness conclusion with
articulated reasoning with some rational underpinning?
Analysis
I
Ortlieb discloses that some underwater-towed vessels have fins
extending from opposite sides of the hull to provide upward or downward
drive. Ortlieb 1:5—9. But according to Ortlieb, these vessels have several
disadvantages. Id. at 1:14—15. In particular, Ortlieb explains that the fins—
some widely extending and bulky—become caught in driftwood, collide
with foreign objects, require great rudder-shifting forces, are sensitive to
shocks, among other issues. Id. at 1:15—55. To solve these problems,
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Application 13/403,713
Ortlieb uses a compact vessel without fms extending from the sides of the
body. Id. at 1:56—59, 2:14—18. In particular, the vessel is made entirely as a
transverse-drive producing body with a rudder. Id. at 1:66—2:1; see also id.
Figs. 1—2.
Despite Ortlieb’s criticism of fms on the side of the vessel’s body
(see, e.g., id. at 1:15—55), the Examiner, nevertheless, proposes adding lift-
generating surfaces projecting from the vessel’s body—namely, Stillman’s
vanes. Final Act. 4—5. Even assuming, without deciding, that Ortlieb only
teaches away from widely extending fms, Ortlieb’s discussion of prior
designs, nevertheless, weighs against the Examiner’s obviousness
conclusion. That is, the Examiner has not shown why it would have been
obvious to add these surfaces to a vessel specifically designed to function
without them. See Final Act. 4—5; Ans. 2—9.
II
In the Final Rejection, the Examiner does not present any rationale
applicable to adding lift-generating surfaces. See Final Act. 4—5. Although
the Examiner presents a reason for adding sensors to Ortlieb, that rationale
does not address why one of ordinary skill would have added Stillman’s
vanes. See id. At most, the Examiner restates the vanes’ functionality—i.e.,
to provide lift. See id. at 5. So, although the Examiner provides a
motivation for adding sensors, the Examiner did not articulate any reason for
coupling the recited lift-generating surface to the body proximal the mid­
section. See id. at 4—5.
III
In the Answer, the Examiner presents two additional obviousness
rationales, but the Examiner does not adequately support either. Ans. 2—\.
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First, the Examiner concludes that combining Stillman’s vanes with
Ortlieb’s vessel would have been obvious to try. Id. at 4. But the Examiner
has not supported this rationale with findings that there had been (1) a finite
number of identified, predictable solutions or (2) a recognized need. See id.
Rather, the Examiner identifies only one potential solution: Stillman’s vanes.
Id. Yet there are many others. In fact, Ortlieb suggests several. See, e.g.,
Ortlieb 1:14—55 (discussing rigid fins extending from a forward-hull region,
delta-shaped supporting fins, among others). The existence of a broad
selection of choices and no recognized need identified by the Examiner
weigh against the Examiner’s obvious-to-try rationale here. See Leo Pharm.
Prods, v. Rea, 726 F.3d 1346, 1356-57 (Fed. Cir. 2013); see also MPEP
§ 2143 I. E. (9th ed. Rev. 07.2015, Nov. 2015) (instructing examiners on the
required findings in support of an obvious-to-try rationale, which include a
recognized need and a finite number of identified solutions). Given the
record, the Examiner has not adequately supported this obvious-to-try
rationale. See Ans. 4.
Second, the Examiner concludes that the proposed modification
applies a known technique to a known device ready for improvement.
Id. at 3. For example, this rationale could be relevant to an invention that
can be seen as an improvement on a base device and the prior art contained a
known technique applicable to the base device. See MPEP § 2143 I. D.
(instructing examiners on how to make an obviousness rejection using the
ready-for-improvement rationale). However, apart from restating the
function of the lift-generating surfaces and summarily concluding that it
would have been obvious, the Examiner does not provide further
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Application 13/403,713
explanation. See Ans. 3. As discussed above, such an explanation is needed
here given Ortlieb’s criticism. See App. Br. 14—16.
On this record, we are constrained to find that the Examiner has not
supported the obviousness conclusion with articulated reasoning with some
rational underpinning.
The additional references are not cited to teach the “at least one lift
generating surface coupled to the body proximal the mid-section,” and, thus,
do not cure the deficiency explained above. See Final Act. 4—5.
Because Appellant’s arguments on this issue are dispositive
(App. Br. 14—16), we need not reach Appellant’s remaining arguments.
Therefore, we do not sustain the Examiner’s rejection of (1)
independent claim 1, (2) independent claims 19 and 23, which are rejected
for the same reasons (Final Act. 7), and (3) dependent claims 3—7, 11, 20-
22, 24, and 25.
THE REMAINING OBVIOUSNESS REJECTIONS
We also do not sustain the Examiner’s rejections of dependent claims
2, 8—10, and 12 for the same reasons discussed above in connection with
claim 1. The additional references are not cited to teach the “at least one lift
generating surface coupled to the body proximal the mid-section,” which is
missing from Ortlieb, Stillman, and Bolin, and, thus, do not cure the
deficiency explained above. See Final Act. 9—10.
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DECISION
We reverse the Examiner’s rejection of claims 1—12 and 19—25.
REVERSED
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