Ex Parte SMIT et al

Board of Patent Appeals and Interferences

Jul 29, 2004

08718573 (B.P.A.I. Jul. 29, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL SMIT and ADRIANUS J.P.M. SCHUIT
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Appeal No. 2004-0942
Application No. 08/718,573
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HEARD: July 13, 2004
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Before ABRAMS, STAAB, and NASE , Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 36-41,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2004-0942
Application No. 08/718,573
Page 2
BACKGROUND
The appellants’ invention relates to a method for treating an underwater bed. An
understanding of the invention can be derived from a reading of exemplary claim 36,
which appears in the appendix to the Brief.
The single prior art reference relied upon by the examiner in rejecting the
appealed claims is:
Cousineau 5,305,585 Apr. 26, 1994
Claims 36-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cousineau.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the Answer
(Paper No. 30) for the examiner's reasoning in support of the rejection, and to the Brief
(Paper No. 29) and Reply Brief (Paper No. 32) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
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Application No. 08/718,573
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1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The appellants’ invention is directed to a method for forming a trench in the
surface of the bed of a body of water by means of a water jet suspended from a vessel
floating on the water. The nozzle from which the water jet is emitted is maintained at a
distance above the bed by means of cables, and the water jet strikes the bed in a
concentrated manner to break the coherence of the soil that constitutes the bed in such
a way as to create a trench. Specification, pages 1-3.
Independent claim 36 recites a method of forming a trench in the bed of a body
of water which comprises suspending a pressure line that terminates in a nozzle from a
vessel, positioning the nozzle a distance above the bed, pumping water on board the
vessel and discharging the water through the nozzle downwardly against the bed at an
overpressure “while maintaining said nozzle positioned at said distance above said
bed.” The examiner has rejected this claim as being obvious1 in view of the teachings
of Cousineau, in the course of which the finding is made that the reference discloses a
downwardly directed nozzle 18, 18' that is located a distance “above the bed” when
water is being discharged therefrom (Answer, page 3). The appellants argue that
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Application No. 08/718,573
Page 4
2Appeal No. 1999-2034, mailed August 16, 1999.
Cousineau does not teach discharging water from the nozzle while it is spaced above
the bed, much less maintaining the nozzle positioned a distance above the bed while it
discharges water against the surface of the bed. In response, the examiner asserts that
Cousineau states numerous times that the “discharge member” is “adjacent to” the bed
which, applying the common definition of “adjacent,” constitutes a teaching that the
nozzle is “above” the bed (Answer, page 5). In the course of the examiner’s
presentation, reference is made to an earlier decision in this case2 in which a panel of
the Board of Patent Appeals and Interferences affirmed the rejection of the pending
claims based upon the same reference, with the examiner drawing attention to
statements made by the Board in that decision. However, it is important to note with
regard to the earlier Board decision that the single independent claim now before us
differs from that which was present in the previous appeal in that it contains the further
limitation that the nozzle is maintained at a distance above the bed while the water is
discharged toward the surface of the bed.
Cousineau discloses a system for uprooting aquatic plants. As shown in Figures
1 and 2 and explained in columns 4-6, pressurized water is pumped through a handle
12 and discharge member 14, whereupon it issues from a plurality of downwardly
oriented nozzles 18 such that “the water jets churn the soil 20a of the lake bottom 20,
undermining the roots by forming a pocket 36 of very loose soil and water,” the result
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Application No. 08/718,573
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being that the roots of the plants are freed from the soil (column 6, line 43 et seq.).
Figure 6 shows the device “in operation” (column 3, lines 47-51), and from our
perspective one of ordinary skill in the art would have been taught by this showing that
the nozzles are not positioned “above” the surface of the bed during operation, as is
required by claim 36, but are in contact with or below the initial surface of the bed.
The foregoing interpretation is supported by several passages from the
specification. In this regard, we initially point out that the examiner’s reliance upon the
term “adjacent” to support the position of the nozzles in the rejection is not well taken,
for Cousineau clearly states that it is discharge member 14 that is “adjacent” to the
surface of the bed, and not nozzles 18, which are mounted in the underside of member
14 and extend below it. Thus, there is no teaching in Cousineau of locating the nozzles
a distance above the surface of the bed while the jets of water are being discharged
therefrom. Additional confirmation of the interpretation that the Cousineau nozzles are
not positioned a distance above the bed during operation is provided by the explanation
of the advantage of utilizing a discharge member having a elliptical cross-section rather
than a circular one because it would “rest upon the soil rather than tending to burrow
into it during operation, as might happen with narrow circularly cross-sectioned
discharge members” (column 4, lines 45-50; emphasis added). Of course, if the
discharge member rests upon the surface of the bed, the downwardly oriented nozzles
clearly are not spaced a distance above the surface. Finally, we note Cousineau’s
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instruction to add weight to discharge member 14 “for deeper penetration of the
discharge member into the soil during operation” (column 5, lines 45-47) which,
interestingly, is provided in the context of insuring that the discharge member (14)
remain “adjacent” the soil during operation (column 5, lines 43-45).
We therefore find ourselves in agreement with the appellants arguments in the
Briefs that the rejection is not well taken, for it is our view that the teachings of
Cousineau do not establish a prima facie case of obviousness with regard to the subject
matter recited in claim 36. This being the case, we will not sustain the rejection of
independent claim 36 or, it follows, of claims 37-41, which depend therefrom.
CONCLUSION
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Application No. 08/718,573
Page 7
The rejection is not sustained.
The decision of the examiner is reversed.
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgc
ANDREW J. PATCH
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