11655719 (B.P.A.I. Mar. 20, 2012)

Ex Parte Thibodaux

Board of Patent Appeals and InterferencesMar 20, 2012

11655719 (B.P.A.I. Mar. 20, 2012)

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. 11/655,719 01/19/2007 Ronald J. Thibodaux 2014.1270 9353 31230 7590 03/21/2012 TED M. ANTHONY BABINEAUX, POCHE, ANTHONY & SLAVICH, L.L.C P.O. DRAWER 52169 LAFAYETTE, LA 70505-2169 EXAMINER VENNE, DANIEL V ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 03/21/2012 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 RONALD J. THIBODAUX ____________ Appeal 2010-003433 Application 11/655,719 Technology Center 3600 ____________ Before LINDA E. HORNER, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003433 Application 11/655,719 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 4-6 and 8-10.1 Br. 12, 24. Claims 1-3 and 7 have been cancelled.2 The Appellants’ representative presented oral argument for this appeal on March 15, 2012. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. REJECTIONS Claims 4-6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gainey (US 4,141,308, issued Feb. 27, 1979) and Sholl (US 4,846,357, issued Jul. 11, 1989). Claims 8-10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gainey, Phelan (US 6,056,608, issued May 2, 2000), and Sholl. CLAIMED SUBJECT MATTER The claimed subject matter pertains to a vessel having an articulating member disposed on the vessel’s hull such that the position of the center of gravity of the total weight of both the vessel and associated equipment is 1 The Appellant explicitly appeals the grounds of rejection for independent claims 4 and 8. Br. 7, 12. The Appellant also presents argument for claims 9 and 10 (Br. 24), even though claims 4 and 8 were specified as “[t]he only claims at issue in this appeal.” Br. 7. Claims 5 and 6 are not specifically appealed in the Appeal Brief; however, claims 5 and 6 both depend directly from claim 4 and have been rejected under the same ground of rejection as claim 4 (Final Off. Act., p. 4, mailed July 29, 2008). Additionally, claims 5 and 6 have not been identified as not being involved in the Appeal as has, e.g., claim 1 (Br. 7). Thus, it is understood that the Appellant appeals claims 5 and 6 along with claim 4. 2 Claims 1 and 2 have been cancelled by the Examiner. Ans. 2. Appeal 2010-003433 Application 11/655,719 3 optimized. Spec. 1, 4. Additionally, the end of the articulating member can be maneuvered above and lateral to the vessel’s hull making any point within a large semi-spherical volume accessible. Spec. 4-5. Claims 4 and 8 are the independent claims on appeal. Claim 4 is representative of the subject matter on appeal and recites: 4. A vessel comprising: a. a wide hull having a low draft and an upper surface; b. at least one drive motor mounted to said hull; c. a propeller affixed to each of said at least one drive motor; d. at least one rudder positioned aft of each propeller for steering said hull; e. an articulating boom, pivotally attached to the upper surface of said hull, comprising: i. a first rigid member having a base and a distal end, wherein said base of said first rigid member rotates about vertical and horizontal axes intersecting said base; and ii. a second rigid member having a base and a distal end, wherein the base of said second member is pivotally attached to the distal end of said first rigid member, and said second rigid member pivots about a horizontal pivot axis between said first and second rigid members; f. means for selectively moving said boom about said vertical and horizontal axes intersecting said base of said first rigid member; and g. means for selectively extending and retracting said articulating boom. Appeal 2010-003433 Application 11/655,719 4 Claim 8 is identical to claim 4, except for limitation “a” of claim 8 which is similar to limitation “a” of claim 4. OPINION The Examiner finds that Gainey discloses a vessel having a hull 2, a propeller 23 affixed to a drive motor 30, and a rudder for steering. Ans. 4; see Gainey, col. 4, ll. 49-52, fig. 1. The Examiner also finds that Gainey discloses “scooping and loading machinery on the bow of the hull [2].” Ans. 5. More specifically, Gainey discloses that boat 2 has a U-shaped telescopic boom 5 having arms that are pivotably coupled at points 35, 36. The boom is supported by a mast 1, pulley 3, and cable 4, and can be extended to a point over the bow 39 so that a scoop 6 can be lowered in the water. Col. 3, ll. 4-14, and 54-67, fig. 3. When Gainey’s boat 2 moves forward debris is accumulated from the water into scoop 6. Later, the debris can be dumped from the scoop into a container or onto shore. See Col. 2, ll. 18-28, 42-48. The Examiner turns to Sholl’s disclosure of a boom 15 to teach that a similar boom may act as a replacement for Gainey’s boom. Ans. 5-6. The reason the Examiner provides for the substitution is for allowing Gainey’s boat to be used for assignments other than scooping and loading. Ans. 6, 8- 9. The Examiner’s modification of Gainey’s boat, in light of Sholl’s disclosure, further includes making the hull of Gainey’s boat wider to be “more stable in roll for the boom.” Ans. 5-6. The Appellant contends that the Examiner’s prima facie case of obviousness fails because the substitution of Gainey’s boom 5 with something similar to Sholl’s boom 15 would make Gainey’s boat unstable. See Br. 13-15. Moreover, the Appellant contends that the proffered Appeal 2010-003433 Application 11/655,719 5 substitution results in a significant alteration of “the weight distribution on the Gainey air boat, thereby placing such boat at great risk of tipping or rolling over (causing injury to personnel or damage to property).” Br. 15. The Appellant points out that when Sholl’s boom 15 is in operation the barge 16 uses legs 18 to contact the ocean floor to lift the barge off the water. See Br. 14; see also Sholl, col. 2, l. 61 – col. 3, l. 2. As such, Sholl’s legs 18 provide stability to use boom 15. See Sholl, fig. 3. The Appellant contrasts Sholl’s lift barge 16 with Gainey’s boat 2 by asserting that Gainey’s boat is free floating when its U-shaped boom 5 is in operation. See Br. 14. Regarding the Appellant’s contention that the substitution would make Gainey’s boat unstable, the Examiner reasons that Gainey’s air foil 24 “would provide balance for the boat.” Ans. 9; see Gainey, col. 5, ll. 35-45. The Appellant contends that although air foil 24 is a counter balance to Gainey’s boom, it only acts as one when the motor is operating. Br. 15. The Appellant contends that when the motor is not operating, the air foil 24 does not act as a counter balance, and cannot act as a stabilizer. Id. We agree with the Appellant’s understanding that motor and propeller must be operating for Gainey’s air foil 24 to act as a counter balance. Further, Gainey’s air foil 24 is aligned with Gainey’s U-shaped boom 5, and the U- shaped boom 5 is constrained to rotate about a fixed axis, i.e., the imaginary line connecting pivot points 35 and 36. Gainey, fig. 3. Sholl’s boom is not so constrained; rather, it is rotatable about pedestal 23. Sholl, col. 3, ll. 3-7, 11-16. As such, the range of moment arms that can be applied to a boat via a rotatable boom similar to Sholl’s boom 15 is considerably larger than Gainey’s fixed U-shaped boom 5. The larger range of moment arms would Appeal 2010-003433 Application 11/655,719 6 be expected to challenge the stability of the boat because Gainey’s air foil 24 when acting as a counterbalance may not be aligned with the boom during the air foil’s operation. The Examiner also reasons that additional modifications can provide more stability in roll; for example, changing the size of the boat, hull, and/or the boom. Ans. 5-6, 9-10. However, it is not reasonably clear to what extent Gainey’s boat and/or boom would need to change to accomplish the improved stability in roll. See Br. 15-16. In balancing this unknown with the Examiner’s rationale of a “simple substitution of one know[n] element for another” (Ans. 9), the Examiner’s reasoning does not have a rational basis. Thus, the rejection of claim 4 and dependent claims 5 and 6 is not sustained. The Examiner’s rejection for claim 8 includes the same reasoning with lack of rational underpinning provided for claim 4. Ans. 6-8. Accordingly, for the same reasons as provided above, the rejection of claim 8 and dependent claims 9 and 10 is not sustained. DECISION We REVERSE the rejections of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Gainey and Sholl, and claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over Gainey, Phelan, and Sholl. REVERSED Klh