Ex Parte Vanderhye

Board of Patent Appeals and Interferences

Nov 30, 2009

10443954 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT A. VANDERHYE
____________________

Appeal 2009-000431
Application 10/443,954
Technology Center 3600
____________________

Decided: November 30, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert A. Vanderhye (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 5, 6, 15, 21, 23, 25, 27, 29,
30, 32-34, and 39-43. We have jurisdiction under 35 U.S.C. § 6(b).

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SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention pertains to a watercraft having a
vertical axis wind turbine. Claim 5, reproduced below, is representative of
the subject matter on appeal.
Claim 5. A watercraft comprising: a vertical
axis wind turbine including a shaft; a propulsion
mechanism operatively connected to the shaft; and
a manual assist operatively connected to the shaft.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Manning US 1,466,026 Aug. 28, 1923
Tust US 1,471,870 Oct. 23, 1923
Savonius US 1,697,574 Jan. 1, 1929
Annis US 2,677,344 May 4, 1954
Wiggin US 3,212,470 Oct. 19, 1965
Belanger US 4,497,631 Feb. 5, 1985
Willis US 6,497,593 B1 Dec. 24, 2002

The following Examiner’s rejections are before us for review:
1. Claims 5, 6, and 25 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Wiggin;
2. Claims 27, 30, and 39-41 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wiggin in view of Savonius;
3. Claims 42 and 43 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wiggin, Savonius, and Tust;
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4. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wiggin and Manning;
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willis and Manning;
6. Claims 21 and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Willis and Belanger;
7. Claims 32-34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willis, Manning, and Annis.

ISSUES
The Issue Regarding Rejection No. 1
Appellant argues that Wiggin lacks a manual assist as recited in claim
5. App. Br. 4-5. The Examiner found that Wiggin's steering bar 34
corresponds to the claimed manual assist. Ans. 3. Thus, the first issue on
appeal is:
Has Appellant shown that the Examiner erred in finding that Wiggin
discloses the manual assist of claim 5?
The Issue Regarding Rejection No. 2
Appellant argues that there is no suggestion to replace Wiggin's cup-
type rotor with a Savonius rotor, and that the references lack certain claimed
elements. App. Br. 6-8. Thus, the next issue is:
Has Appellant shown that the Examiner erred in rejecting claims 27,
30, and 39-41 as obvious over Wiggin and Savonius?
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The Issue Regarding Rejection No. 3
Appellant argues that it would not be obvious to provide a boat having
multiple turbines with more than one propulsion mechanism. See App. Br.
8-9. The next issue is:
Has Appellant shown the Examiner erred in rejecting claims 42 and
43 over Wiggin, Savonius, and Tust because the proposed combination fails
to render obvious the claimed watercraft?
The Issue Regarding Rejection No. 4
Appellant argues that there is no suggestion in the art to combine
Wiggin and Manning. App. Br. 9-10. Thus, another issue is:
Has Appellant shown that the Examiner erred in rejecting claim 29
because there is no suggestion to combine the references?
The Issue Regarding Rejection No. 5
Appellant argues that there is no suggestion to combine Willis and
Manning, and that the combination will not result in a clutch in which the
component on the wind turbine side of the clutch is moved. App. Br. 10.
Thus, the next issue on appeal is:
Has Appellant shown that the Examiner erred in rejecting claim 15
because there is no suggestion to combine the references and because the
proposed modification would not result in the claimed clutch configuration?
The Issue Regarding Rejection No. 6
Appellant argues that neither reference cited in the rejection of claims
21 and 23 discloses a removably-mounted propulsion mechanism. App. Br.
11. Therefore, another issue is:
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Has Appellant shown that the Examiner, in rejecting claims 21 and
23, failed to set forth a prima facie case of obviousness of a watercraft
having a removably-mounted propulsion mechanism?
The Issue Regarding Rejection No. 7
Appellant argues that it would not be obvious to substitute a Savonius
turbine for Willis's turbine, that Willis lacks an enabling disclosure of a
clutch and of a propeller at least twelve inches in diameter. App. Br. 12-19.
Therefore, the next issue on appeal is:
Has Appellant shown that the Examiner erred in rejecting claims 32
through 34 as obvious over Willis, Manning, and Annis?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. An ordinary meaning of the word “operative” is “[f]unctioning
effectively.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (New College ed. 1976).
2. Wiggin discloses a multi-hull, catamaran style boat having a
cup-type vertical axis wind turbine (wind turbine propulsion unit 10) that
drives a propeller 48 via rotor shaft 60. Wiggin, col. 2, ll. 5-9; col. 3, ll. 3-7;
Figs. 1, 3. Rotor shaft 60 extends through the center of tubular support 14
which has an integral boss 32 that receives steering bar 34. Id., col. 2, ll. 23-
28, 56-57. Movement of the steering bar 34 by the sailor rotates the tubular
support 14 and steers the craft by changing the direction of the propeller.
Id., col. 2, ll. 28-35; col. 3, ll. 32-37. "The [turbine rotor] shaft 60 is
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rotatably connected to the tubular support 14 by means of ball or roller
bearing assemblies 62 and 64 . . . ." Id., col. 2, ll. 57-59.
3. Savonius discloses a spring-controlled brake f to stop the wind
turbine rotor shaft, and that the brake is actuated by a cord or chain g.
Savonius 2, ll. 62-65. When the rotor is in the arrested state and is hit by a
powerful wind gust, the spring allows the brake to give way a bit thereby
allowing the rotor to turn slightly so as to minimize wind resistance. Id., ll.
65-70. Figure 5 depicts the brake in the actuated condition, with the end of
the cord or chain secured to a pin on the pole m. Cf. Reply Br. 3 (Appellant
asserting that the cord or chain is tied to the support m). One of ordinary
skill would recognize that the brake is initially manually actuated by pulling
the cord or chain and attaching it to the pole, and that thereafter the brake is
controlled by the spring during large gusts.
4. Tust discloses a ship provided with two wind turbines
(windmills 8) each having a shaft 21 connected to drive shaft 23. Tust 2, 11-
14, 57-62; fig. 1; see App. Br. 8 (Appellant admitting that some references,
including Tust, teach multiple wind turbines on a boat). Drive shaft 23 is
connected to two parallel propeller shafts 48 through a single gearbox. Tust
2, ll. 40-64; figs. 1, 5. Although Tust's Figure 5 shows only one propeller
50, Tust discloses that the two propeller shafts 48 (both of which are shown
in the figure) are each provided with a screw propeller 50. Id. at 2, ll. 51-56;
fig. 5.
5. Tust also discloses that disengaging one turbine connecting
shaft from the drive shaft reduces the amount of power applied to the drive
shaft. Tust 2, ll. 15-22.
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6. Willis discloses a watercraft having a vertical axis
propeller-type wind turbine driving a water propeller. Willis, col. 11, ll. 32-
39; fig. 11. Willis discloses that the watercraft is a trimaran (and thus has a
plurality of hulls). Id., col. 8, ll. 45-49 (describing the embodiment of Figure
9); col. 11, ll. 32-39 (stating that the embodiments of Figures 9 and 11 are
the same, except that Figure 11 shows a vertical axis turbine); figs. 9, 11.
Willis also teaches, in the context of a wind powered land vehicle
embodiment, that the vehicle would "be provided with a disengagement
device such as any of a number of clutch-like devices (not shown) well-
known to those skilled in the art . . . . " Id., col. 3, ll. 15-19; col. 4, ll. 55-59.
7. Willis discusses balancing the forces on the air propeller and
the water propeller. Willis, col. 9, l. 65 – col. 10, l. 25. Willis teaches that,
to balance the forces, the working surface area of the air propeller must be
800 times greater than that of the water propeller because water is denser
than air. Id., col. 10, ll. 21-24. Willis defines the working surface area as
"that portion of the propeller's total surface area that is perpendicular to the
direction of a first moving stream." Id., col. 10, ll. 2-5.
8. Manning discloses a wind turbine having a clutch between the
turbine shaft and the driven shaft. See Manning 1, ll. 9-12; fig. 3 (showing
clutch members 24 and 27). Clutch member 24 is secured to the reduced
end portion 4′ of turbine shaft 4. Manning 2, ll. 63-68; fig. 3. Mating clutch
member 27 is slidably arranged on the driven shaft 26 for engagement and
disengagement with clutch member 24. Id. at 2, ll. 68-78. Manning's Figure
3 depicts the clutch located closely adjacent to the rotor (near the annular
members 20 and 21 which are secured to the lower ends of the vanes 19).
Id. at 2, ll. 49-56; fig. 3.
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PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is the Appellant's burden
to precisely define the invention, not that of the United States Patent and
Trademark Office. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(citing 35 U.S.C. § 112, ¶ 2). We must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See SuperGuide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co., 550 U.S. at 416. A prima facie conclusion of obviousness
may be supported by a showing that the claims are directed to a process,
machine, manufacture, or composition of matter already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, and such modification yields a predictable result. See id. (citing
United States v. Adams, 383 U.S. 39, 40). The Court further stated that:
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[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
KSR Int’l Co., 550 U.S. at 417. When considering obviousness of a
combination of known elements, the operative question is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
In KSR, the Court rejected the rigid requirement of a teaching,
suggestion or motivation to combine known elements, and noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co., 550 U.S. at 418.
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co., 550 U.S. at 416 (citing Adams, 383 U.S.
at 51-52). “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, … would be led in a direction
divergent from the path that was taken by the applicant.” In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)).

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ANALYSIS
Rejection No. 1: The rejection of claims 5, 6, and 25 under 35 U.S.C.
§ 102(b) as being anticipated by Wiggin
Appellant argues the rejected claims as a group. App. Br. 4-5. We
select claim 5 as the representative claim, and claims 6 and 25 stand or fall
with claim 5. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Claim 5 recites "a manual assist operatively connected to the [wind
turbine] shaft." The Examiner found that Wiggin's steering bar 34
corresponds to the manual assist, and that it "is operatively connected to
casing [tubular support] 14, which is operatively connected to shaft 60."
Ans. 9. The Examiner found that Wiggin’s steering bar 34 is manually
operated to assist in the craft’s direction control, and thus satisfies the
“manual assist” limitation when the claim is given the broadest reasonable
construction. Ans. 9.
Appellant contends that the claimed "manual assist" is limited to a
device that assists in propelling the craft by rotating the shaft, and that this is
the only interpretation consistent with the Specification. App. Br. 4-5 (citing
Spec. 26, last paragraph). Appellant also asserts that the immediately
preceding claim phrase ("a propulsion mechanism operatively connected to
the shaft") supports the construction of "assist" as meaning assisting in
propulsion. Reply Br. 2. However, the claim does not specify the object
receiving the assistance. Also, the claim indicates that the propulsion
mechanism and the assist are both operatively connected to the shaft, but
does not further define the relationship between them. While the portion of
the Specification cited by Appellant does discuss an embodiment of "a
manual assist to the wind turbine for rotating the shafts," the portion does
not state that all manual assists perform that function. Spec. 26-27
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(carryover paragraph). Appellant does not direct our attention to any other
portion of the Specification that explicitly defines the manual assist in the
limited manner advocated.
Appellant also argues that rotation of the steering bar does not rotate
the rotor shaft. App. Br. 5. However, claim 5 merely requires the manual
assist to be "operatively connected" to the shaft. A person of ordinary skill
would understand two components to be "operatively connected" when the
components are connected such that they function effectively. See Fact 1
(dictionary definition for "operative"). This understanding is consistent with
Appellant's Specification, which describes "operatively connecting" a
turbine shaft into "operative engagement" with the shaft supporting element.
Spec. 2. As Appellant admits, Wiggin's steering bar 34 is attached to the
tubular support which is rotatably connected to the shaft 60. App. Br. 5; see
also Fact 2. Thus, the steering bar and the turbine shaft are operatively
connected in that they are connected so as to function effectively.
Appellant has not persuaded us that the Examiner erred in finding that
Wiggin's steering bar is "a manual assist operatively connected to the shaft"
when the claim is given the broadest reasonable construction consistent with
the Specification. We affirm the rejection of claim 5 and the rejection of
claims 6 and 25, which fall with claim 5.

Rejection No. 2: The rejection of claims 27, 30, and 39-41 under 35 U.S.C.
§ 103(a) as being unpatentable over Wiggin in view of Savonius
Claim 27
Appellant argues that there is no suggestion to provide a Savonius
turbine in place of Wiggin's cup-type turbine because Wiggin's did not
choose the previously-known Savonius type. App. Br. 7. We are not
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persuaded by Appellant's argument. The Supreme Court has rejected the
rigid requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness. KSR Int’l Co., 550 U.S. at 418-19.
A conclusion of obviousness may be supported by a showing that a prior art
device is modified by substituting one known element for another, and the
modification yields predictable results. Id. at 416. Appellant offers no
persuasive argument or evidence that the substitution of a Savonius rotor for
Wiggin's rotor would have yielded unpredictable results. As such, Appellant
has not shown that the Examiner erred in rejecting claim 27 as obvious over
Wiggin and Savonius, and we affirm that rejection.

Claim 30
Appellant argues that Savonius fails to teach a manually actuated
brake. App. Br. 7. Appellant appears to contend that Savonius's brake is
only automatically operated by a spring. Reply Br. 2-3. Appellant's
interpretation of Savonius is not entirely correct. Savonius's brake is
initially manually operated by pulling the cord or chain, and thereafter is
automatically controlled by the spring in response to wind gusts. Fact 3.
Thus, Appellant has not shown that the Examiner erred in finding that the
reference discloses a manually actuated brake, Ans. 10, and we affirm the
rejection of claim 30.

Claim 39
Independent claim 39 recites "readily removable connectors
operatively connecting the vanes to the shaft so that upon detachment of the
vanes from the shaft the shaft will substantially not be rotated by wind
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engaging the vanes." The Examiner relies on Savonius for this feature, but
does not clearly indicate which component corresponds to the claimed
removable connectors. See Ans. 10-11. The Examiner refers to Savonius's
end plates 20 and pins z, but does not articulate – and it is not facially
apparent – how either of these components is readily removable.
Accordingly, we are constrained to reverse the rejection of claim 39 as
obvious over Wiggins and Savonius.

Claims 40 and 41
Independent claim 40 recites “a human powered device for powering
the catamaran or trimaran.” Claim 41 depends from claim 40. The
Examiner found that Wiggin’s steering bar 34 corresponds to the claimed
human powered device because the steering bar is a device for powering the
boat into turns. Ans. 4-5, 9. Appellant argues that this is erroneous in that
the steering bar merely steers the boat, but does not power it. App. Br. 6.
We agree with Appellant. As such, we are constrained to reverse the
rejection of claims 40 and 41 as obvious over Wiggin and Savonius.

Rejection No. 3: The rejection of claims 42 and 43 under 35 U.S.C. § 103(a)
as being unpatentable over Wiggin, Savonius, and Tust
Claim 42
Claim 42 depends from claim 40. For the reasons set forth above, we
reverse the rejection of 40 as obvious over Wiggin and Savonius. The
Examiner does not rely on Tust in any way that would cure the deficiency of
the underlying rejection of claim 40. See Ans. 5, 11. Accordingly, we also
reverse the rejection of claim 42.

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Claim 43
Independent claim 43 recites a multi-hull watercraft having "first and
second … propellers operatively connected to said first and second wind
turbine shafts, respectively." Both Appellant and the Examiner appear to
incorrectly construe the claim as requiring two completely separate power
trains. See App. Br. 8-9; Ans. 5, 11. Claim 43 merely requires each of two
propellers to be connected to the corresponding turbine shaft, but does not
exclude a common connection for the two turbine-propeller sets.
Tust discloses a ship having two wind turbines with each having a
shaft connected to a single drive shaft which, through a single gearbox,
drives two propeller shafts and two propellers. Fact 4. Thus, Tust discloses
the recited first and second propellers operatively connected to first and
second wind turbine shafts, respectively. Wiggin discloses a multi-hull
watercraft with a single, vertical axis wind turbine. Fact 2. Tust teaches that
two turbines produce more power than one. Fact 5. Using two turbines and
two propellers, as taught by Tust, on Wiggin's watercraft amounts to the
application of a known technique to a known device in order to achieve the
predictable result of producing more propulsion power and would have been
obvious to one having ordinary skill in the art.
Appellant argues that providing a plurality of turbines each with its
own propulsion mechanism has certain advantages over the prior art. App.
Br. 9. Appellant appears to assert that, without recognition of these
advantages, there can be no prima facie case of obviousness because there is
no suggestion to modify the references. Id. Appellant also argues that Tust
teaches away from the invention by providing multiple turbines connected to
the same propeller, and that it would be disadvantageous for Tust to have
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multiple propellers. Reply Br. 3-4. However, Appellant's arguments are
unpersuasive as they are based on the incorrect assumptions that Tust
discloses only a single propeller (propulsion mechanism) and that the claim
requires two separate power trains.
Appellant also argues that Tust does not teach a multi-hull craft, and
therefore lacks the "inherent advantages" of the invention. Reply Br. 3.
This argument is unpersuasive because the Examiner relies on Wiggin for
the disclosure of a multi-hulled watercraft, see Ans. 3, 5. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)).
Lastly, Appellant argues that Tust does not remedy the previously-
asserted deficiencies of Wiggin and Savonius. App. Br. 9. As it is not clear
how any of Appellant's earlier arguments apply to independent claim 43, this
argument does not persuade us of error. We note that independent claim 43
lacks many of the features recited in the previously discussed claims.
Appellant has not demonstrated that the Examiner erred in concluding
that the subject matter of claim 43 is obvious.

Rejection No. 4: The rejection of claim 29 under 35 U.S.C. § 103(a) as
being unpatentable over Wiggin and Manning
Claim 29 depends indirectly from claim 5 and recites a clutch between
the propulsion mechanism and the turbine shaft. Appellant concedes that
Manning discloses a clutch, but argues that Manning does not remedy
Wiggin's lack of a manual assist. App. Br. 9-10. As discussed above
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regarding claim 5, Appellant has not persuaded us that Wiggin lacks a
manual assist, therefore there is no deficiency for Manning to remedy.
Appellant also argues that there is no suggestion to combine the
references. Id. at 10. Even if this was correct, the lack of a suggestion to
combine does not persuade us of error. See KSR Int'l Co., 550 U.S. at 418-
19 (rejecting the rigid requirement of a suggestion to combine references).
Further, the Examiner found that Manning provides such a suggestion by
teaching the desirability of having a clutch mechanism between a wind
turbine and a power shaft so as to disengage one from the other. Ans. 11-12.
Appellant does not specify how the Examiner is incorrect. See App. Br. 10;
Reply Br. passim (offering no reply to the Examiner's response regarding
claim 29).
Appellant has failed to show that the Examiner erred in rejecting
claim 29 as obvious over Wiggin and Manning, and we affirm that rejection.

Rejection No. 5: The rejection of claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over Willis and Manning
Claim 15 recites a clutch having a lifting mechanism which
disengages two gears by moving the turbine side gear away from the
propulsion mechanism side gear. Willis discloses a multi-hulled watercraft
with a vertical wind turbine driving a propeller, and teaches that any well-
known clutch-like device can be used in a wind turbine drive train. Fact 6.
Willis, however, does not provide the details of such a clutch. The
Examiner turns to Manning for the teaching of the clutch particulars. Ans.
6. Manning teaches a wind turbine driving a shaft through a clutch, but the
movable clutch member is on the driven shaft rather than the turbine shaft
side of the clutch. Fact 8. The Examiner concluded that it would have been
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obvious to apply Manning's clutch teaching to Willis's boat, and that reversal
of the clutch component arrangement would have been obvious as a matter
of design choice. Ans. 6-7. Thus, contrary to Appellant's argument, App.
Br. 10, the Examiner's proposed combination would result in a clutch having
the moving component on the turbine shaft.
We are not persuaded by Appellant's argument that there is no
suggestion to combine the references, App. Br. 10. As the Examiner points
out, Ans. 12, Willis teaches the desirability of using a clutch in a wind
turbine drive. Thus, Willis provides a suggestion to combine the references.
Appellant has not persuaded us of the unreasonableness of the
Examiner's position that it would have been an obvious design choice to
reverse the arrangement of Manning's moving and fixed clutch components.
Appellant asserts that having the moving component on the driven side, as
shown in Manning, "is highly disadvantageous, in fact impractical, in a
boat" because the moving gear will be in or near the water. Reply Br. 4; see
also App. Br. 10. While it is not clear why one of ordinary skill would place
any portion of the clutch in or near the water (rather than closely adjacent to
the rotor as shown in Manning's Figure 3), Appellant's assertion supports the
conclusion that it would have been obvious to design a boat clutch so that
the moving component is on the turbine side and away from the water.
Appellant has not shown error in the rejection of claim 15 as obvious
over Willis and Manning.

Rejection No. 6: The rejection of claims 21 and 23 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Willis and Belanger
Appellant argues that the Examiner has failed to make a prima facie
showing of obviousness because neither Willis nor Belanger discloses the
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removably mounted propulsion mechanism as recited in apparatus claim 21.
App. Br. 11. In response, the Examiner finds that a removable propulsion
mechanism "is a basic arrangement in most watercraft to facilitate
maintenance.” Ans. 12. Appellant challenges the truth of this assertion.
Reply Br. 4. The Examiner does not provide any support for the finding or
adequately articulate why, if this were indeed true, the proposed
combination of the cited references would include this feature so as to render
the claimed subject matter obvious. On the record before us, we are
constrained to reverse the rejection of claim 21 and the rejection of claim 23,
which recites the method of using the watercraft of claim 21 and which
includes the step of mounting the propulsion mechanism.

Rejection No. 7: The rejection of claims 32-34 under 35 U.S.C. § 103(a) as
being unpatentable over Willis, Manning, and Annis
Claim 32 recites a multi-hull watercraft having a Savonius vertical
axis wind turbine, a propeller at least twelve inches in diameter, and a clutch
between the turbine shaft and the propeller. As discussed above in the
context of claim 15, the Examiner's proposed combination of Willis and
Manning results in a multi-hulled watercraft with a vertical wind turbine
driving a propeller and with a clutch in a drive train. See Facts 6, 8.
Appellant does not appear to dispute the Examiner's finding, Ans. 8, that
Annis discloses a watercraft having a Savonius rotor, see App. Br. 14.
Further, Appellant concedes that "Savonius wind turbines per se have been
around since at least the early 1930s." App. Br. 14.
Appellant argues that it would not be obvious to substitute a vertical
axis Savonius wind turbine for Willis' vertical axis wind turbine because the
substitution is contrary to Willis's teachings and would destroy the essence
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of Willis's device. App. Br. 14; Reply Br. 5. Appellant's argument is based
on the assertion that the two turbines are different in that a Savonius turbine
is a drag type, while Willis's propeller turbine is a lift type. App. Br. 14;
Evidence Appendix (documents purportedly comparing maximum tip
velocities). Appellant also notes that Willis discloses and claims a propeller
turbine rather than a previously known Savonius turbine. App. Br. 14-15.
While the two turbines may be different types and Willis selected a
propeller turbine, Appellant fails to point to any disclosure in Willis that
persuades us that Willis discourages one of ordinary skill from using a
Savonius turbine on a watercraft. Similarly, we are not convinced that any
document in Appellant's Evidence Appendix "provides a negative
suggestion to modify Willis to provide a Savonius." App. Br. 16.
Appellant's evidence suggests that a Savonius turbine has performance
characteristics different from other turbines, but we fail to see the "negative
suggestion" to which Appellant refers. Further, Appellant’s evidence
indicates that the ordinary artisan has a high level of skill and would
recognize the tradeoffs of using one rotor rather than another.
Appellant has also failed to persuade us that the substitution of
Annis's boat-mounted vertical axis turbine would destroy the essence of
Willis's device having a boat-mounted vertical axis turbine. The resulting
substitution would simply yield Willis's trimaran with a different turbine, but
would not prevent Willis's device from functioning as a wind turbine
powered boat.
Appellant also contends that Willis does not disclose the recited
propeller size of at least twelve inches, and that this feature would not be
obvious because Willis is "non-enabled" in this regard. App. Br. 13-14.
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20
Appellant's contentions are based on a misinterpretation of Willis.
Appellant refers to Willis's discussion of sizing the water and air propellers
(wind turbine) so as to balance the forces acting on them, and asserts that a
twelve inch diameter water propeller would require an 800 foot diameter air
propeller. App. Br. 13. Willis actually teaches that the "working surface
areas" – not the diameters – have a ratio of 800 to 1. Fact 7. Not only is
diameter not equal to area, Willis's "working surface area" implicates
variables in addition to the diameter. Id. The Examiner maintains that the
propeller size is simply a matter of design choice, dependent on the size of
the craft and the desired results. Ans. 13. Appellant has not shown that the
Examiner's position is unreasonable, incorrect, or otherwise erroneous.
We are also not persuaded by Appellant's argument that Willis is
non-enabling for a wind powered boat with a clutch, App. Br. 16. Appellant
bears the burden of introducing evidence that a prior art reference lacks an
enabling disclosure. In re Fracalossi, 681 F.2d 792, 793 (CCPA 1982).
Appellant has not introduced any such evidence. Further Willis discloses
that clutch-like devices were well known in the art, Fact 6, and Manning
describes in detail a wind turbine clutch, Fact 8.
We affirm the rejection of claims 32-34 as obvious over Willis,
Manning, and Annis.

CONCLUSIONS
Rejection No. 1
Appellant has not shown that the Examiner erred in finding that
Wiggin discloses the manual assist of claim 5.
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Rejection No. 2
Appellant has not shown that the Examiner erred in rejecting claims
27 and 30 as obvious over Wiggin and Savonius, but has shown that the
Examiner erred in rejecting claims 39, 40, and 41.
Rejection No. 3
Appellant has not shown the Examiner erred in rejecting claim 43
over Wiggin, Savonius, and Tust because the proposed combination fails to
render obvious the claimed watercraft, but has shown that the Examiner
erred in rejecting claim 42.
Rejection No. 4
Appellant has not shown that the Examiner erred in rejecting claim 29
because there is no suggestion to combine the references.
Rejection No. 5
Appellant has not shown that the Examiner erred in rejecting claim 15
because there is no suggestion to combine the references and because the
proposed modification would not result in the claimed clutch configuration.
Rejection No. 6
Appellant has shown that the Examiner, in rejecting claims 21 and 23,
failed to establish a prima facie case of obviousness of a watercraft having a
removably mounted propulsion mechanism.
Rejection No. 7
Appellant has not shown that the Examiner erred in rejecting claims
32 through 34 as obvious over Willis, Manning, and Annis.

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22
DECISION
The decision of the Examiner to reject claims 21, 23, and 39-42 is
reversed. The decision of the Examiner to reject claims 5, 6, 15, 25, 27, 29,
30, 32-34, and 43 is affirmed.
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).

AFFIRMED-IN-PART

Klh

ROBERT A. VANDERHYE
801 RIDGE DR.
MCLEAN VA 22101-1625