Ex Parte MontgomeryDownload PDFPatent Trial and Appeal BoardAug 2, 201813242489 (P.T.A.B. Aug. 2, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/242,489 09/23/2011 23599 7590 08/06/2018 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 James Montgomery 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JMG-0001 3125 EXAMINER VENNE, DANIEL V ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 08/06/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES MONTGOMERY Appeal2017-010646 Application 13/242,489 Technology Center 3600 Before JENNIFER D. BAHR, EDWARD A. BROWN, and FREDERICK C. LANEY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James Montgomery (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, 5-12, 14, 16, 18-21, and 23-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2017-010646 Application 13/242,489 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below from page 3 of the last-entered amendment, filed February 23, 2017 1 (hereinafter "February 2017 Amendment" or "Feb. 2017 Amend."), is illustrative of the claimed subject matter. 1. A suction stabilized float suitable for supporting objects on water comprising: at least one flotation device comprising a buoyant material of a size sufficient to float at least a ten pounds above a waterline wherein said flotation device is unitary with or secured to a chamber wherein the chamber has a first portion that is gas and liquid tight and a second portion adapted to be open into water below a waterline, said first and second portions being unitary or integral and wherein said chamber is adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline, and wherein the water within the chamber remains in connection with the water at the waterline, and wherein the suction stabilized float has only one chamber. 1 Appellant states that an amendment after final was submitted changing all instances of the word "flotation" to "floatation (Appeal Br. 3), but the electronic record for this application contains no such amendment. See Ans. 3 (the Examiner noting that "no such amendment has been received"). The reproductions of claims 1 and 2 on page 20 of the Appeal Brief, which reflect such an amendment, thus, are incorrect. Accordingly, we cite herein to the claims in the February 2017 Amendment. 2 Appeal2017-010646 Application 13/242,489 REJECTIONS I. Claims 1, 2, 5-12, 14, 16, 18-20, and 23-26 stand rejected under 35 U.S.C. §I03(a) as being unpatentable over Cho (US 2006/0225634 Al, pub. Oct. 12, 2006). 2 II. Claim 21 stands rejected under 35 U.S.C. §I03(a) as being unpatentable over Cho and Staley (US 5,518,431, iss. May 21, 1996). DISCUSSION Rejection I Appellant argues for patentability of claims 1, 2, 5-12, 14, 16, 18-20, and 23-26 subject to this ground of rejection as a group. Appeal Br. 3-16. We select claim 1 as representative of this group and claims 2, 5-12, 14, 16, 18-20, and 23-26 stand or fall with claim 1. Independent claim 1 requires a float comprising at least one flotation device unitary with or secured to a chamber "adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline." Feb. 2017 Amend. 3. Claim 1 also recites that the "float has only one chamber." Id. The Examiner finds that Cho discloses a suction stabilized float substantially as called for in claim 1 including "wherein said chamber 2 This is the second appeal on the present application. The Board issued a Decision, dated November 15, 2016 (hereinafter "Decision"), affirming a rejection of claims 1, 2, 5-12, 14, 16, and 18-26 under 35 U.S.C. §I03(a) as being unpatentable over Cho. Decision 12. Claims 1 and 2 were subsequently amended by adding the word "substantially" before "filled." 3 Appeal2017-010646 Application 13/242,489 ( compartment) is adapted to be ( capable of being since no specific adaptation or structure of this adaptation is specified by applicant) substantially filled (interpreted as more water inside than outside) with a volume of water." Final Act. 3 (italics omitted). The Examiner finds that Cho "does not explicitly disclose only one chamber." Id. at 5 (italics omitted). The Examiner notes, however, that Cho "discloses that the particular number of compartments is not limiting and also discloses that other arrangements for introducing positive buoyancy such as foam filled compartments could be used instead of positively pressurized compartments ... , and such a foam filled compartment would function similar to [Appellant's] buoyant material ... to provide positive buoyancy and would not constitute, comprise or define a chamber." Id. ( citing Cho ,r 25). Thus, the Examiner finds that Cho teaches that positive buoyancy may be introduced, to achieve a net positive buoyancy, without the need for any positively pressurized compartments. Id. The Examiner finds, therefore, that Cho "does not exclude a single negatively pressurized compartment of either regular or irregular shape to achieve the requisite distribution of negative buoyancy." Id. (citing Cho ,r 26 and the prior Decision). In view of the foregoing, the Examiner determines that "the particular number of chambers or compartments would have been considered a matter of preference to one of ordinary skill in the art depending on volume, sizing, weight, buoyancy, stability[,] and other engineering design considerations," and that "having only one fillable chamber would simplify construction." Id. at 6. Appellant argues that one skilled in the art modifying Cho "would have no reason to adapt the hypothetical single chambered embodiment to be 4 Appeal2017-010646 Application 13/242,489 substantially filled with water" because Cho "clearly teaches a pneumatic float" which, according to a dictionary definition, means "'adapted for holding or inflated with compressed air' or 'having air-filled cavities."' Appeal Br. 4. Appellant asserts that "a single chamber adapted to be substantially filled with water as required by the claims" requires that the single chamber contains "more water than air." Id. at 5. In contrast, Appellant argues, a person having ordinary skill in the art envisioning a single chambered embodiment of Cho "would necessarily envision such a single chambered embodiment containing more air than water to provide a net positive buoyancy of the structure as a whole." Id. In support of this argument, Appellant cites paragraph 5 of the Declaration of Luis Vendrell, 3 which states that "the float would be filled with less than 50% water." Id. at 5. According to Appellant, "one skilled in the art would clearly understand that a single chambered embodiment of Cho ... would be adapted to be filled with a majority of air and thereby exclude embodiments adapted to be substantially filled with water as required by the claims." Id. at 6. We begin by construing the claim limitation "adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline." Feb. 2017 Amend. 3. Appellant's Specification does not use the language "substantially filled." See Spec. passim. Appellant's Specification does disclose that "the chamber is floated on the liquid after being at least partially filled with a volume of the liquid raised above the interface." Id. at 1 :27-29 ( emphasis added). With respect to the degree to which the chamber 3 Dated and submitted January 12, 2017 (hereinafter "the Vendrell Declaration" or "V endrell Deel."). 5 Appeal2017-010646 Application 13/242,489 is filled with water, Appellant's Specification instructs that the chamber is filled to above the air/water interface between the external body of water and air. See, e.g., id. at 4:8-11; 6:15-28; Fig. 4 (showing air/water interface 3 la). According to the Specification, it is important that the chamber be filled with water to above the air/water interface because the water in the chamber above the air/water interface "exerts a downward force to stabilize the float." Id. at 4: 10-11. The upward force caused by buoyancy of the float' s buoyant material and the downward force generated by the water in the chamber above the air/water interface meet at the air/water interface resulting in the two opposing forces stabilizing the float. Id. at 6:19-23. Figures 4, 6, and 8 of the present application appear to depict floats with chambers filled to more than 50% of their volume with water. However, the Specification gives no indication that filling to more than 50% is of any significance to Appellant's invention. Rather, Appellant's Specification instructs that the chamber should be filled with water to above the air/water interface a sufficient height to generate a downward force opposing the upward force generated by the buoyancy of the float' s buoyant material to stabilize the float. Id. at 6: 19-23. Thus, consistent with Appellant's Specification, we construe the claim limitation "substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline" to mean filled with water to above the air/water interface a sufficient height to generate a downward force opposing the upward force generated by the buoyancy of the float's buoyant material to stabilize the float. Notably, claim 1 does not positively recite that the chamber is substantially filled with water. Rather, claim 1 recites that the chamber is 6 Appeal2017-010646 Application 13/242,489 "adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline." Feb. 2017 Amend. 3 (emphasis added). Thus, we review Appellant's Specification and drawings to ascertain what is meant by "adapted to be substantially filled with a volume of water .... " The Specification discloses that the chamber "is fluid tight in all embodiments and has an opening 35a opposite or below the chamber surface 15a." Spec. at 3 :21-22. The Specification additionally discloses that a gas valve optionally is used to remove air from the chamber allowing the chamber to fill with water. Id. at 4: 12-13, 26-27; 4:33-5:3; 5:8-10, 19-20; 6:6; 8:7-8; 9:27. Alternatively, the entire float may be submerged under water with opening 35(a, b, c) facing upward toward the surface, and once the gas escapes from the chamber, the float is rotated under the water so that opening 35(a, b, c) faces downward. Id. at 7:30-8:1. Appellant's drawings depict a chamber open on the bottom and fully accessible to water flowing in through the bottom opening. See Figs. 1, 4, 6, 8. Aside from being open to the body of water on the bottom and, optionally, having a means, such as a gas valve, to permit gas to escape from the chamber to allow water to flow into the chamber, Appellant's Specification and drawings do not otherwise disclose any structural details of the chamber that would particularly adapt it to be substantially filled with water. Thus, in order to be "adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline," as recited in claim 1, the chamber must be open to the body of water on the bottom and be capable of 7 Appeal2017-010646 Application 13/242,489 permitting the air to escape from the chamber, either by providing a means, such as a gas valve, to do so, or by flipping the float upside down so that the bottom opening faces upward. We do not find any basis in the Specification or drawings for any additional structural requirement to satisfy the "adapted to ... " limitation. Cho discloses a floating structure 100 that includes a negative pressure source 108 drawing vacuum to form a negatively pressurized 11 ON compartment 106 in which the water level is raised above the waterline (i.e., median level 122 of the body of water as a whole-the air/water interface). See Cho ,r,r 21-23. Further, Cho' s negatively pressurized 11 ON compartment 106 is open at the bottom to the body of water and is "adapted to accommodate ingress by the body of liquid." Cho ,r 21; Fig. 2. Thus, Cho discloses a flotation device comprising a chamber adapted to be substantially filled with a volume of water with suction (negative pressurization or vacuum) sufficient to raise the water within the chamber above the waterline, as required by claim 1. Moreover, even assuming that the "adapted to be substantially filled with a volume of water" requires that the chamber be filled with more water than air, as Appellant contends, Cho's Figure 2 appears to depict the negatively pressurized chambers being filled with more water than air. Vendrell's opinion that "one skilled in the art would consider a single chambered float of [Cho's] design to contain a majority of air[; i]n other words, the float would be filled with less than 50% water" (Vendrell Deel. ,r 5) is premised on the theory that positive buoyancy is provided solely by air in water-containing chambers within the float. However, Cho discloses other means of providing positive buoyancy that do not require positively 8 Appeal2017-010646 Application 13/242,489 pressurized water-containing compartments. In particular, Cho teaches that, as an alternative to positively pressurized 11 OP compartments 106, "other arrangements for introducing positive buoyancy", for example, "compartments that may or may not be sealed and that are filled with foam, etc." could be used instead. Cho ,r 25. Such other arrangements provide the requisite positive buoyancy to offset the negative buoyancy generated by the negatively pressurized 11 ON chamber containing more water than air to provide a net positive buoyancy. Id. Appellant argues that the rejections are in error for "[i]gnoring the specific requirement of the claims that, 'the suction stabilized float has only one chamber"' and for "[a]lleging that the 'compartments' should be understood as something other than a comparable structure to the 'inner chamber' of the claims." Appeal Br. 6-7. Further, Appellant argues that Cho "teaches away from the claims requiring a single chamber substantially filled with water" because Cho "teaches that at least one of the compartments (including a single chambered embodiment) must 'exhibit a positive buoyancy,' i.e., more air than water, i.e., pneumatic." Id. at 9. However, as discussed above, Cho teaches that as an alternative to positively pressurized 11 OP compartments 106, "other arrangements for introducing positive buoyancy", such as compartments filled with foam and the like, could be used instead. See Cho ,r 25. As explained by the Examiner (Final Act. 5), and as set forth on page 10 of the Decision, "[a] foam-filled compartment, which would function much like Appellant's buoyant material 7a, 7b, or 7c to provide positive buoyancy, does not constitute, comprise, or define a chamber." Once filled with foam, a foam- filled compartment ceases to be a chamber and, instead, becomes a solid 9 Appeal2017-010646 Application 13/242,489 mass of material integral with the structure surrounding it. Although the foam may trap gas, as Appellant contends (Appeal Br. 8), any gas trapped within cells in the foam is not in the negatively pressurized 11 ON chamber ( compartment 106) adapted to be filled with a volume of water, just as any gas trapped in the foam of Appellant's buoyant material is not in Appellant's chamber. See Spec. 3: 10 ( disclosing foam as an exemplary buoyant material for the float). Thus, Appellant's argument that the positive buoyancy- introducing arrangements disclosed by Cho necessarily comprise additional compartments, or somehow require a single negatively pressurized compartment of Cho to comprise more air than water, is not well founded. Appellant argues that the rejections are in error for failing to properly consider the evidence of unexpected results presented in the V endrell Declaration and in the Declaration of James Montgomery. 4 Appeal Br. 9-- 16. Evaluating the declarations, the Examiner states that "insufficient other details on materials and configurations are provided to ascertain or verify whether the test float is legitimately representative of a float that would be envisioned by the rejection based on Cho." Final Act. 13. In particular, the Examiner points out that "[i]t is not clear if Montgomery included compartments with solid floatation for the test float as envisioned by Cho." Id. at 14. The Examiner continues, "it is not clear how the list/trim is achieved (such as by moving a test weight to provide heeling movement)" and that "[ c ]omparing such arbitrary parameters for a hypothetical test float without including other factors such as additional compartments with solid floatation as taught by Cho ... is insufficient for demonstrating any 4 Dated and submitted January 12, 2017 (hereinafter "the Montgomery Declaration" or "Montgomery Deel."). 10 Appeal2017-010646 Application 13/242,489 unexpected results are achieved for [Appellant's] claimed invention [over] the prior art." Id. Appellant argues that "the Examiner's imagining of embodiments which are allegedly closer to the claims than those tested by application is completely irrelevant to a proper determination of the 'closest prior art."' Appeal Br. 10. Appellant also argues that " [ t ]he Examiner's imagined embodiment constructed from the teachings of Cho ... is irrelevant to a proper unexpected results analysis." Id. at 11. Appellant further argues that "[t]he data evidence of unexpected results ... is clearly commensurate in scope of the claims." Id. at 12. that: In addition, Appellant argues that the data show unexpected results in The data of record shows that the tested comparative embodiment (single chamber not substantially filled with water) provides some increase in the rate of tilt reduction when the single chamber is filled with water from 0-25% but that increase in the rate of tilt reduction tapers offfrom 25o/o-50% filled with water." Id. Appellant continues, "[s]urprisingly and unexpectedly, once the single chamber is substantially filled ( above 50%) with water, the rate of tilt reduction begins to again increase, and instead of tapering off, the rate of tilt reduction keeps increasing until the rate becomes exponential." Id. The Examiner responds that "Appellant's evidence for showing unexpected results does not clearly and sufficiently explain why a rate of tilt reduction for the embodiment tested is unexpected" because the addition of water to the chamber would lower the float and its center of gravity relative to the water line, leading to an expected increase in tilt reduction relative to the same float having less water in the chamber. Ans. 6. The Examiner 11 Appeal2017-010646 Application 13/242,489 adds that "the rate of tilt reduction would expectedly vary and be a factor of many variables other than just the level of ballast water in the chamber" and "Appellant has not adequately addressed these additional factors and has not made a persuasive case that unexpected results have been achieved by the claimed invention to overcome a prima facie obviousness rejection based on the prior art of Cho." Id. at 7. Turning to the declarations themselves, Montgomery provides data (see Montgomery Deel. ,r,r 4---6 and corresponding Stability List/Tilt Graph and Testing Log values Table), and Vendrell interprets the data provided by Montgomery (see Vendrell Deel. ,r,r 4--9). According to Montgomery, the test float includes a "14 [inch] x 11 [inch] .0922 acrylic top" and an "Internal Inner Chamber 10 [inch] x 7 [inch] x 4 [inch] Volume 4 liters." Montgomery Deel. ,r 7. According to Vendrell, the float corresponding to Cho "provides only small linear increases in stabilization as the amount of water raised above the water line increases (from-5.8 to -5.5 when measuring a chamber containing from 4.0 to 2.0 liters of air respectively)." Vendrell Deel. ,r 7. Further, according to Vendrell, the float corresponding to the claimed invention "provides a logarithmic increase in stabilization (from -5.4 to --4.3 when measuring a chamber containing from 0.5 to O liters of air respectively). Id. "[ A ]n applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art." See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As explained by the Examiner, the declarations do not provide evidence establishing that either the claimed invention or the closest prior art was involved in the test, much less that Vendrell's analysis of the test results 12 Appeal2017-010646 Application 13/242,489 compares the claimed invention to the embodiment of Cho relied on in the rejection (i.e., an embodiment with one or more negatively pressurized chambers and no positively pressurized chambers). Specifically, Vendrell's characterization of the tests with 4.0 to 2.0 liters of air as representing Cho' s device (Vendrell Deel. ,r 7) reflect Vendrell's interpretation that the one or more chambers within Cho's float must contain less than 50% water. However, for the reasons discussed above, this interpretation is incorrect for the embodiment expressly taught by Cho wherein positive buoyancy is provided by other arrangements, such as foam, instead of positively pressurized compartments. Moreover, the tests performed by Montgomery provide merely an air valve in the acrylic top to permit air to escape from the chamber. Montgomery does not report any test results for testing performed using a negative pressure source (vacuum) as taught by Cho. See Cho ,r 21. Further, Cho teaches arranging the one or more compartments so that the negatively pressurized compartments are distributed relatively more toward a side of the float opposite where the load is applied to induce a second roll moment opposing the first roll moment in order to stabilize the float. Id. ,r 30. However, Montgomery tested only a centered chamber with an offset load. Montgomery Deel. ,r,r 7, 8. Further, "[f]or objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011), quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). "Where the offered secondary consideration actually results from something other than what is both claimed and novel in 13 Appeal2017-010646 Application 13/242,489 the claim, there is no nexus to the merits of the claimed invention." Takai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Here, V endrell identifies what he characterizes as an unexpected logarithmic increase in stabilization occurring when the chamber includes between 0.5 and O liters of air. Vendrell Deel. ,r 7. As such, Appellant's argument that the unexpected result occurs "once the single chamber is substantially filled (above 50%) with water" (Appeal Br. 12) is unsupported by the declarations. Notably, claim 1 does not require a chamber filled with at least 3.5 liters of water or filled at least 87.5% with water. Rather, as discussed above, claim 1 recites a chamber "adapted to be substantially filled with a volume of water thereby creating suction in the chamber which is sufficient to raise the water within the chamber above the waterline." Thus, to the extent that the results recorded for a chamber having between 3 .5 liters and 4.0 liters of water are unexpected, these results appear to result from a feature not claimed. Furthermore, the Examiner's concerns about "additional factors" contributing to an increase in tilt reduction are relevant to interpreting the results reported in the Montgomery Declaration to determine whether they are unexpected and whether they actually result from something other than what is both claimed and novel in the claim. For example, illustrated embodiments of the invention include inner chamber 19b in which upper portion 27b has a greater cross sectional area than bottom opening 35b. See, e.g., Figs. 5---6. Moreover, the width and depth to height ratio does have an impact on the degree of stabilization achieved. See Spec. 8:27-29. Thus, an increased cross sectional area near the top of the chamber relative to that in the lower sections of the chamber would be expected to yield an increasing 14 Appeal2017-010646 Application 13/242,489 rate of stabilization improvement as the water level rises. As another example, illustrated embodiments of the invention include a groove in buoyant material 7 a that contacts air/water interface 31 a. See, e.g., Figs. 4 (groove 18a), 8. The Montgomery Declaration specifies that the test float has an internal inner chamber measuring 10 inches by 7 inches by 4 inches, defined, or surrounded, by 2 inch by 4 inch foam sections. Montgomery Deel. ,r 7. However, the Montgomery Declaration does not specify whether the foam sections are rectangular prisms or whether they have converging sides, such that the interior walls defining the chamber either converge or diverge, or other irregularities. Notably, a chamber measuring 10 inches by 7 inches by 4 inches has a volume of approximately 4.6 liters, not the 4 liter volume indicated in the Montgomery Declaration. See Montgomery Deel. ,r 7. In the context of the test results, such a discrepancy is significant, and neither the Montgomery Declaration nor the Vendrell Declaration explains or accounts for this. Moreover, the declarations do not specify, for each of the tested air volumes (0 liters, 0.25 liters, .375 liters, .5 liters, 1 liter, 1.5 liters, 2.5 liters, 3 .5 liters, and 4 liters), the head height -namely, the height and volume of the water above the air/water interface of the external body of water in which the testing was conducted. See Montgomery Deel. passim; Vendrell Deel. passim. The head height also has a significant impact on the degree of stabilization achieved. See Spec. 6:26-7:26. One of ordinary skill in the art would expect the internal geometry of the chamber and the external geometry of the float to influence tilt reduction and these issues are not fully addressed in the declarations. 15 Appeal2017-010646 Application 13/242,489 As to unexpected results, "even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges 'produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art."' In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). The Vendrell Declaration points to the increase in stabilization for air content between 0.5 and O liters as being "surprising and unexpected" to one of ordinary skill in the art. Vendrell Deel. ,r,r 7, 8. However, even assuming the rate of stabilization increase over this range of the test points is unexpected, the result appears to be different merely in degree, and not different in kind. Specifically, as acknowledged by Vendrell, increasing the amount of water within the chamber is linked to increased stabilization across all data points, even those supposedly corresponding to the prior art float. Vendrell Deel. ,r 7; see also Montgomery Deel., Stability List/Tilt Graph. Further, such a trend would be expected by one of ordinary skill in the art, given the known associated improvement in stability as the float takes on more ballast. See Spec. 1: 13-16, 7: 11-8 :26. Though the increase in stabilization is most pronounced when the chamber is filled with between only 0.5 and O liters of air, the difference is one of degree rather than kind. Moreover, given the lack of detail provided in the declarations regarding the cross-sectional area of the chamber in the upper regions relative to the lower regions, near the opening, as well as the absence from the declarations of any specification of the head height for each of the test points, it is not clear that the observed increase in the rate of stabilization improvement from 0.5 liters of air to 0 liters of air even is unexpected. 16 Appeal2017-010646 Application 13/242,489 Having now weighed all of the evidence, including both the evidence of obviousness and the evidence of nonobviousness presented by Appellant, it is our conclusion that the evidence of obviousness outweighs the evidence ofnonobviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the Patent Office's case against the strength of appellant's objective evidence of non-obviousness); see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) ("given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that [ the claimed subject matter] would have been obvious"). For the above reasons, Appellant fails to apprise us of error in the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Cho. Accordingly, we sustain the rejection of claim 1, as well as claims 2, 5-12, 14, 16, 18-20, and 23-26, which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Cho. Rejection II In rejecting claim 21, the Examiner finds that "Staley discloses at least one umbrella [38] with a shaft portion [ 40] extending downward from the umbrella and adapted for securement within a socket [ 18] that is secured within a top of an inflatable chamber (tube portion) [12]." Final Act. 6. The Examiner determines that, in view of these teachings of Staley, "one skilled in the art would envision providing an umbrella with a float similar to Cho ... where the umbrella is attached to the top of the chamber via a tube that penetrates the chamber top and retains a gas and liquid tight seal with the chamber top." Id. The Examiner reasons that "[s]uch a configuration would 17 Appeal2017-010646 Application 13/242,489 be recognized as desirable in order to provide shade for the float, provide a durable connection for the umbrella, and expectedly retain air and watertight integrity for both the umbrella attachment and the float." Id. at 6-7. Appellant argues that the rejection of Claim 21 is in error because the rejection "constitutes no more than an unsupported bare allegation." Appeal Br. 17. Appellant adds that "[ n Jone of the cited prior art shows an umbrella or anything even close to an umbrella penetrating a float." Id.; see also Reply Br. 3 (stating that "Staley very clearly fails to teach that the umbrella penetrates the chamber top via a tube and instead includes a set of structures on the top of the float which are specifically designed to receive the shaft of the umbrella without it penetrating the top."). Further, Appellant argues that "[ t ]here is absolutely no reason or evidence in the record as to why one skilled in art would attach an umbrella to the float of Cho in the manner required by claim 21." Appeal Br. 18. According to Staley, "[ fJour sockets 18 are secured within the top portion [of inflatable tube portion 12]." Staley 4:34--40 (boldface omitted). Staley further teaches that "shaft portions 40 of the four umbrellas 3 8 are adapted for securement within the four sockets 18" and that "four umbrellas 38 are removably secured within the four sockets 18." Id. 5:16-19 (boldface omitted). In addition, Staley's claim 7 recites that "shaft portions of the four umbrellas [are] adapted for securement within the four sockets of the inflatable tube portion." Id. 8:9--11. Further, Staley's Figure 3 depicts socket 18 disposed on the top surface of inflatable tube portion 12, not penetrating into inflatable tube portion 12. The Examiner does not articulate a reason with rational underpinnings for securing an umbrella to the top of Cho' s chamber via a tube that 18 Appeal2017-010646 Application 13/242,489 penetrates the chamber top, rather than securing the umbrella within a socket secured to the top of the float as taught by Staley. The securement taught by Staley would retain air and watertight integrity for both the umbrella attachment and the float, and the Examiner does not point to any evidence, or provide any technical explanation, indicating that the securement arrangement taught by Staley would necessarily be any less durable than securement via a tube penetrating the top of the chamber. For the above reasons, we do not sustain the rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Cho and Staley. DECISION The Examiner's decision rejecting claims 1, 2, 5-2, 14, 16, 18-20, and 23-26 under 35 U.S.C. §103(a) as being unpatentable over Cho is AFFIRMED. The Examiner's decision rejecting claim 21 under 35 U.S.C. §103(a) as being unpatentable over Cho and Staley is REVERSED. 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)(l )(iv). AFFIRMED-IN-PART 19 Copy with citationCopy as parenthetical citation