Ex Parte Moore

Board of Patent Appeals and Interferences

Sep 8, 2009

11081996 (B.P.A.I. Sep. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN CLAY MOORE
____________

Appeal 2008-001808
Application 11/081,996
Technology Center 3600
____________

Decided: September 8, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-001808
Application 11/081,996

2
STATEMENT OF THE CASE
Steven Clay Moore (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-14.1 We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a wake control
mechanism comprising a plate, typically mounted behind a boat’s transom,
to increase wake size and/or modify wake shape. Spec. 1, para. [0002].
Claims 1 and 10, reproduced below, are representative of the claimed
subject matter.
1. An apparatus for controlling a size of a wake of
a watercraft, the apparatus comprising:
more than one arms comprising a length
adjustable arm;

1 In the Appeal Brief, Appellant only listed the rejection of claims 1 and 10
under 35 U.S.C. § 102(b) under the grounds of rejection to be reviewed on
appeal (App. Br. 5), and only specifically presented arguments directed to
claims 1 and 10. App. Br. 6-10. In the Answer, the Examiner pointed out
that the rejections of claims 2-9, and 11-20 have not been withdrawn by the
Examiner, but are treated as not being under review. Ans. 2-3. On page 11
of the Reply Brief, Appellant indicated an intention to rely on the arguments
presented for claims 1 and 10 for the claims (claims 2-9 and 11-14)
depending from claims 1 and 10, and expressly withdrew “the remainder of
the claims” (independent claim 15 and claims 16-20 depending from claim
15) from the appeal. Accordingly, upon return of jurisdiction of this
application to the Technology Center, the Examiner should take appropriate
action with respect to claims 15-20. See Ex parte Ghuman, 88 USPQ2d
1478, 1480 (BPAI 2008) (rejected claims not pursued by an applicant in an
appeal brief are to be canceled from the application). This appeal involves
only claims 1-14. Appellant is admonished to be more precise in future
appeal briefs in setting forth the claims and rejections which are on appeal.
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joints to couple each of the arms with a stern
of the watercraft; and
a wake control plate to couple with the
length adjustable arm, the wake control plate
having a width that is at least a substantial portion
of a width of the stern of the watercraft, wherein
adjustment of the length of the length adjustable
arm can fully submerse the wake control plate and
can position a front edge of the wake control plate,
with respect to a direction of motion, below a
bottom edge of the stern at an angle that raises a
back edge of the wake control plate to scoop the
water upward to produce a negative lift to lower
the stern of the watercraft to increase the size of
the wake created by the watercraft.
10. A watercraft for controlling a size of a wake in
a body of water, the watercraft comprising:
more than one arm pivotally coupled with
the watercraft, comprising at least a first length
adjustable arm;
a wake control plate coupled with the more
than one arm; and
a driver coupled with the first length
adjustable arm to adjust a length of the first length
adjustable arm to lower the wake control plate
from an inactive position at which the wake
control plate is out of the body of the water with a
back edge of the wake control plate at a height
above a height of a front edge of the wake control
plate, to an active position at which the wake
control plate is at least partially within the body of
the water to scoop the water to produce a negative
lift, wherein the negative lift lowers the stern of the
watercraft further into the body of the water to
adjust the size of the wake.

Appeal 2008-001808
Application 11/081,996

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The Rejections
Appellant seeks review of the Examiner’s rejections of claims 1, 2, 4,
5, 8, 10, 11, and 14 under 35 U.S.C. § 102(b) as being anticipated by
O’Donnell (US 4,967,682, issued Nov. 6, 1990); claim 3 under 35 U.S.C. §
103(a) as being unpatentable over O’Donnell and Beals (US 3,456,610,
issued Jul. 22, 1969; and claims 6, 7, 9, 12, and 13 under 35 U.S.C. § 103(a)
as being unpatentable over O’Donnell and Gaudin (US 4,261,278, issued
Apr. 14, 1981).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUES
Appellant argues that O’Donnell does not describe a “wake control
plate having a width that is at least a substantial portion of a width of the
stern of the watercraft” so as to increase the size of the wake, as called for in
claim 1. Reply Br. 6. According to Appellant, O’Donnell describes two
trim tabs that have widths that are a small portion of the width of the stern of
the boat and that are adapted to make small adjustments to the tilt of the
boat, not to adjust the size of the wake. Id. Appellant contends that
O’Connell’s trim tabs “would not produce a significant change in the wake
size, particularly at speeds typical for wakeboarding.” Id. Appellant urges
that the language of claim 1 “should be considered in the context of the
specification as a whole,” particularly the square area of the plates with
respect to the boat, as illustrated in Figures 2B, 2D, 5, 6B, 6C, and 7 and the
disclosure that “[t]he present invention achieves the same lowering of the
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boat rear that is achieved by a bladder, but without the added weight” (Spec.
2, para. [0004]). Reply Br. 7.
As noted above, Appellant relies on the arguments presented for claim
1 for claims 2-9.
Appellant argues that O’Donnell does not describe the driver and
mechanical interconnections between the watercraft, driver, and first length
adjustable arm to transition the wake control plate from the inactive position
to the active position, as called for in claim 10. Reply Br. 9. In particular,
Appellant argues, in essence, that it is not clear that the inactive position
described in claim 10 can even be achieved with the hardware illustrated in
Figures 2-5 of O’Donnell. Reply Br. 11.
As noted above, Appellant relies on the arguments presented for claim
10 for claims 11-14.
Accordingly, the issues presented in this appeal are:
(1) Has Appellant demonstrated that the Examiner erred in finding that
O’Donnell’s plate 15 has “a width that is at least a substantial
portion of a width of the stern of the watercraft” so as to increase
the size of the wake, as called for in claim 1?
(2) Has Appellant demonstrated that the Examiner erred in finding that
O’Donnell describes a driver coupled to the first length adjustable
arm to adjust the length of the arm to lower the wake control plate
from an inactive position “at which the wake control plate is out of
the body of the water,” as called for in claim 10?
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FACTS PERTINENT TO THE ISSUES
FF1 Appellant’s Specification describes that “[t]he plates may be any
size and may be connected to the stern and adjusted . . . so that the
front edge of the wake control plate(s) can be submersed in the
water . . . at an angle which provides a scooping action.” Spec. 2,
para. [0005].
FF2 Appellant’s Specification states that the present invention
“achieves the same lowering of the boat rear that is achieved by a
bladder, but without the added weight.” Spec. 2, para. [0004].
Appellant’s Specification discusses bladders, or water tanks,
installed near the back of the boat to increase boat weight or
displacement, and thus increase wake size. Spec. 1, para. [0003].
FF3 Appellant concedes that the wake control plates depicted in Figure
5 of Appellant’s application have a width that is at least a
substantial portion of a width of the stern of the watercraft. Reply
Br. 4 and 7.
FF4 As depicted in Figures 6 and 7, O’Donnell’s plates 15 are
comparable in size to the plates depicted in Appellant’s Figure 5.
FF5 By appropriate extension or retraction of hydraulic actuators 20,
21, O’Donnell’s plates 15 can be moved to either a neutral
position, as illustrated in Figure 2; a position in which the planing
surface of the plate 15 extends below the planing surface of the
hull, as illustrated in Figure 3, so as to lower the stern of the boat; a
position in which the planing surface of plate 15 is in a heel-down
orientation extending below the planing surface of the hull, as
illustrated in Figure 4, so as to raise the stern of the boat by a first
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technique; and a position in which the planing surface of plate 15
is in a heel-down orientation extending below the planing surface
of the hull, as illustrated in Figure 5, so as to raise the stern of the
boat by a second technique. Col. 1, ll. 44-56, and col. 2, ll. 51-62.
FF6 When moved to the position shown in Figure 3, O’Donnell’s plate
15 scoops water upward, as illustrated by the arrows, and lowers
the stern of the boat, in much the same manner as the bladder
discussed in Appellant’s Specification (FF2), thus increasing the
size of the wake, at least to some degree.
FF7 Plate 15 is not clearly illustrated as being out of the body of water,
that is, not in contact with the body of water, in any of the
positions shown in Figures 2-5 of O’Donnell (FF6). In particular,
the plate 15 is clearly at least partially submerged in the body of
water in Figures 3-5, but we cannot ascertain whether the plate 15
is in contact with the water in the neutral position shown in Figure
2, as the waterline is not shown. O’Donnell discloses that “drag is
minimized due to the fact that the planing surfaces are only
momentarily submerged to obtain appropriate action, as opposed to
being continually submerged.” Col. 2, ll. 43-46. We find this
teaching inconclusive as to whether the hydraulic actuators are
adapted to move the plate 15 to a position in which it is out of the
body of water when not in the “momentarily submerged” position
described by O’Donnell.
FF8 The Examiner does not rely on Gaudin for any teaching that would
have prompted a person of ordinary skill in the art to modify
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O’Donnell’s actuators so as to permit placement of the plate 15 in
a position out of the body of water.

PRINCIPLES OF LAW
Claim construction
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”). “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” Id. at 1379.
It is entirely proper to use the specification to interpret what is meant by a
word or phrase in a claim, and this is not to be confused with the improper
addition of an extraneous limitation from the specification wholly apart from
any need to interpret the word or phrase. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
When a word of degree is used, it is necessary to determine whether
the specification provides some standard for measuring that degree. See
Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984).
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Anticipation
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).
An anticipation rejection cannot be predicated on an ambiguous
reference. Rather, disclosures in a reference relied on to prove anticipation
must be so clear and explicit that those skilled in the art will have no
difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899
(CCPA 1962).

ANALYSIS
Claim 1
Appellant’s Specification does not specify any particular minimum
wake control plate width, either in absolute terms, or as a percentage of the
width of the stern of the boat, that is necessary to satisfy the claim limitation
of “a width that is at least a substantial portion of a width of the stern of the
watercraft.” Rather, to the contrary, Appellant’s Specification describes that
“[t]he plates may be any size and may be connected to the stern and adjusted
. . . so that the front edge of the wake control plate(s) can be submersed in
the water . . . at an angle which provides a scooping action.” FF1. By way
of guidance in ascertaining the metes and bounds of the term “substantial,”
Appellant’s Specification states that the present invention achieves the same
lowering of the boat rear that is achieved by a bladder, or water tank,
installed near the back of the boat to increase boat weight or displacement,
and thus increase wake size, without the added weight of a water tank. FF2.
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Thus, consistent with the guidance provided by Appellant’s Specification,
we construe the limitation “a width that is at least a substantial portion of a
width of the stern of the watercraft” in claim 1 as requiring a plate having
sufficient width to scoop water upward to lower the rear (stern) of the boat
to thereby effectively increase the displacement of the boat and increase the
size of the wake.
When moved to the position shown in Figure 3, O’Donnell’s plate 15
scoops water upward, as illustrated by the arrows, and lowers the stern of the
boat, in much the same manner as the bladder discussed in Appellant’s
Specification (FF2), thus increasing the size of the wake, at least to some
degree. FF5 and FF6. Claim 1 does not require that the wake control plate
increase the size of the wake to any particular degree. Moreover,
O’Donnell’s plate 15 has a width that is comparable in size to the plates
depicted in Appellant’s Figure 5 (FF4), which Appellant concedes have a
width that is at least a substantial portion of a width of the stern of the
watercraft (FF3). We thus find that O’Donnell’s plate 15 has “a width that is
at least a substantial portion of a width of the stern of the watercraft” so as to
increase the size of the wake, as called for in claim 1.
Claim 10
Claim 10 calls for a driver coupled to the first length adjustable arm to
adjust the length of the arm to lower the plate from an inactive position at
which the wake control plate is out of the body of water to an active
position. Appellant argues that it is not clear that the inactive position
described in claim 10 can even be achieved with the hardware illustrated in
Figures 2-5 of O’Donnell. On the basis of our findings above (see FF7), we
agree with Appellant. O’Donnell does not provide a sufficiently clear and
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explicit teaching that the hydraulic actuators 20, 21 are adapted for, or
capable of, positioning the plate 15 in a position at which it is out of the
body of water as to establish that O’Donnell anticipates this feature of claim
10.

CONCLUSIONS
(1) Appellant has not demonstrated that the Examiner erred in finding
that O’Donnell’s plate 15 has “a width that is at least a substantial
portion of a width of the stern of the watercraft” so as to increase
the size of the wake, as called for in claim 1. Therefore, Appellant
has not persuaded us that the Examiner’s rejection of claim 1, or
claims 2, 4, 5, and 8, which stand or fall with claim 1, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2008), as being
anticipated by O’Donnell, should be reversed. Inasmuch as
Appellant merely relies on the arguments presented for claim 1 in
contesting the additional rejections of claim 3 as being
unpatentable over O’Donnell and Beals, and claims 6, 7, and 9 as
being unpatentable over O’Donnell and Gaudin, Appellant
likewise has not persuaded us that either of these rejections should
be reversed.
(2) Appellant has demonstrated that the Examiner erred in finding that
O’Donnell describes a driver coupled to the first length adjustable
arm to adjust the length of the arm to lower the wake control plate
from an inactive position “at which the wake control plate is out of
the body of the water,” as called for in claim 10. Therefore,
Appellant has persuaded us that the rejection of claim 10 and
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claims 11 and 14, which depend from claim 10, as being
anticipated by O’Donnell, should be reversed. Inasmuch as the
Examiner does not rely on Gaudin for any teaching that would
have prompted a person of ordinary skill in the art to modify
O’Donnell’s actuators so as to permit placement of the plate 15 in
a position out of the body of water (FF8), Appellant’s argument
likewise persuades us that the rejection of claims 12 and 13 as
being unpatentable over O’Donnell and Gaudin also should be
reversed.

DECISION
The Examiner’s decision is affirmed as to claims 1-9 and reversed as
to claims 10-14.
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).
AFFRIMED-IN-PART

Appeal 2008-001808
Application 11/081,996

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