11186356 (B.P.A.I. Feb. 8, 2011)

Ex Parte Murphy

Board of Patent Appeals and InterferencesFeb 8, 2011

11186356 (B.P.A.I. Feb. 8, 2011)

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. 11/186,356 07/20/2005 Michael J. Murphy 308-110-CIP 5369 7590 02/09/2011 JOSEPH E. MUETH, ESQ. JOSEPH E. MUETH LAW CORPORATION Suite 300 100 E. Corson Street PASADENA, CA 91103-3842 EXAMINER SWINEHART, EDWIN L ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 02/09/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL J. MURPHY ____________ Appeal 2009-008163 Application 11/186,356 Technology Center 3600 ____________ Before JOHN C. KERINS, STEVEN D.A. McCARTHY and FRED A. SILVERBERG, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008163 Application 11/186,356 2 STATEMENT OF THE CASE Michael J. Murphy (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-8. Claim 9 was previously canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed to a water sports device having, inter alia, a strut and a fuselage, both made of extruded aluminum or aluminum alloy (referred to collectively hereafter as “extruded aluminum”). Claim 1, reproduced below, is illustrative of Appellant’s invention: 1. In a water sports device for supporting a human rider while said rider and device are towed, comprising: an elongate board having a front end and a back end; a single elongate strut approximately a 90° angle to and extending downward from said board; a fuselage having a forward end and a rearward end fixed at a point between its forward end and rearward end to said strut at a position spaced below said board; a forward wing or blade secured proximate the forward end of said support, generally parallel to said board, wherein said forward wing or blade has a generally water hydrofoil cross-section, and a rear wing or blade secured proximate the rearward end of said support, generally parallel to said board; the improvement wherein at least said strut and fuselage are made of extruded aluminum or aluminum alloy. Appeal 2009-008163 Application 11/186,356 3 Independent claims 22 and 3 call for the extruded aluminum strut and fuselage to be separately extruded then joined, with the grain orientations in the strut and fuselage running in specified directions. (Appeal Br., Claims Appendix). THE REJECTIONS The Examiner has rejected: (i) claims 1-4 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Woolley (US 5,249,998, issued October 5, 1993) in view of Jones (US 4,615,291, issued October 7, 1986)(hereafter “Jones ‘291”); (ii) claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Woolley in view of Jones ‘291 and Barrows (US 5,211,594, issued May 18, 1993); and (iii) claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Woolley in view of Jones ‘291 and Jones (US 4,027,614, issued June 7, 1977)(hereafter “Jones ‘614”). ISSUES Has the Examiner supported, by way of an articulated reason having rational underpinnings, the conclusion that it would have been obvious to modify the Woolley water sports device to provide a strut and fuselage made of extruded aluminum or aluminum alloy? 2 Claim 2 includes language in its preamble that states: “The invention more particularly can be defined as follows:”. The claim should be amended to delete that part of the preamble. Appeal 2009-008163 Application 11/186,356 4 ANALYSIS Claims 1-4 and 8--Obviousness--Woolley/Jones ‘291 The Examiner and Appellant agree that the Woolley patent discloses all elements of claim 1, with the exception of providing a strut and fuselage that are made of extruded aluminum. (Ans. 3; Appeal Br., Reply Br., passim). The Examiner cites to the teaching in Jones ‘291 of a catamaran having a hydrofoil and struts formed of extruded aluminum. (Ans. 4). The Examiner then concludes that it would have been obvious, in view of this teaching, to provide the Woolley device with a strut and fuselage made of extruded aluminum, such modification being “desirable at the time of the invention so as to provide for the ease in construction.” (Id.). The Examiner additionally opines that “[t]he type of aluminum used, as well as means for interconnecting same are considered to have been obvious to the ordinary routineer working with aluminum and having knowledge of material properties.” (Id.). In response to several arguments advanced by Appellant, the Examiner further maintains that [i]t can hardly be considered invention to note a breakage problem, and then employ a stronger material to address the problem. . . . Clearly the ordinary routineer would have been aware of the superior strengths associated with extruded parts as compared to cast. (Ans. 6-7). Appellant challenges the Examiner’s stated reason to combine the teachings, noting that Woolley uses cast aluminum for its integral strut and fuselage, and explains that the use of extruded parts comes with a different set of manufacturing considerations such that a switch from a unitary cast component to use of extruded components would not be recognized as Appeal 2009-008163 Application 11/186,356 5 resulting in easier manufacture. (Appeal Br. 10). The Examiner, upon consideration of Appellant’s position, appears to agree, noting that “some aspects of each of the stated methods of construction result in an ‘easier’ method, yet there are advantages in some areas for each method.” (Ans. 7- 8). As such, the Examiner’s initially-stated reason to combine appears not to actually exist, or, at a minimum, is not supported by clear and rational underpinnings. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(obviousness rejections may not be supported by mere conclusory statements; must instead be supported by articulated reasoning with some rational underpinning), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner presses the issue that there are “well known . . . strength advantages of an extrusion over a casting, and therefore the ordinary routineer would have recognized the advantage of modifying Woolley et al. ‘998 as taught by Jones ‘291, thereby providing extruded pieces.” (Ans. 8). Even if we were to accept, in the absence of actual evidence, that some unspecified material property directed to “strength” is superior or advantageous in extruded aluminum as compared to cast aluminum, we agree with Appellant’s rhetorical question: “Strength in what respect?” (Reply Br. 3). Appellant from the start has emphasized that the strut and fuselage in the claimed device are subject to repeated high impact loads. (Spec. 3, ll. 9-13; Spec. 9, ll. 18-19). Appellant further identifies several modes of deformation and forces to which the strut is exposed in use. (Reply Br. 3). The Jones ‘291 patent, while disclosing an extruded aluminum hydrofoil with a fuselage and struts, fails to state any reason why extruded Appeal 2009-008163 Application 11/186,356 6 aluminum is used over other materials, and further does not appear to be employed in a manner that would subject it to high impact loads. As such, the person of ordinary skill in the art would not glean from Jones ‘291 that extruded aluminum components would be advantageously used for, or provide improved performance over, the unitary cast aluminum strut and fuselage of Woolley. Thus, the Examiner’s additional reasoning that persons skilled in the art would have found it obvious to use extruded aluminum for those components in Woolley is not adequately supported by evidence. The rejection of claim 1, and that of claims 2-4 and 8, as being unpatentable over Woolley in view of Jones ‘291, will not be sustained. Claims 6 and 7--Obviousness--Woolley/Jones ‘291/Barrows The Barrows reference is not relied on by the Examiner in any manner that remedies the deficiencies of the findings leading to the erroneous conclusion of obviousness of claim 2, from which these claims depend. The rejection will not be sustained. Claim 5--Obviousness--Woolley/Jones ‘291/Jones ‘614 The Jones ‘624 reference is not relied on by the Examiner in any manner that remedies the deficiencies of the findings leading to the erroneous conclusion of obviousness of claim 2, from which claim 5 depends. The rejection will not be sustained. CONCLUSION The Examiner has not supported, by way of an articulated reason having rational underpinnings, the conclusion that it would have been Appeal 2009-008163 Application 11/186,356 7 obvious to modify the Woolley water sports device to provide a strut and fuselage made of extruded aluminum or aluminum alloy. DECISION The decision of the Examiner to reject claims 1-8 is reversed. REVERSED mls JOSEPH E. MUETH, ESQ. JOSEPH E. MUETH LAW CORPORATION SUITE 300 100 E. CORSON STREET PASADENA, CALIFORNIA 91103-3842