Ex Parte Wallace

Board of Patent Appeals and Interferences

Jan 25, 2010

11177186 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE WALLACE
____________

Appeal 2009-000629
Application 11/177,186
Technology Center 3600
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Decided: January 25, 2010
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-000629
Application 11/177,186

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STATEMENT OF THE CASE
George Wallace (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1, 2, 5-10, 16, 17, 20, 21, and
30. Claims 3, 4, 11-15, 18, 19, and 22-29 have been indicated to contain
allowable subject matter but objected to for depending from a rejected claim.
Claim 31 has been indicated to be allowable. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a motion compensation
system for underwater sonar systems. Spec. 1:9-12.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A nautical system comprising:
a) a nautical platform adapted for
positioning on or within a body of water;
b) an underwater buoyancy apparatus
connected to the nautical platform via at least one
tether, which underwater buoyancy apparatus
comprises:
a housing defining an inner buoyancy
chamber, which buoyancy chamber is capable of
containing a volume of air and/or water, and
wherein the housing comprises at least one air
valve capable of allowing air into and/or out of the
inner buoyancy chamber and at least one flood port
capable of allowing water into and/or out of the
inner buoyancy chamber;
c) an underwater sonar device connected to
the underwater buoyancy apparatus via at least one
tether, such that a distance between the underwater
buoyancy apparatus and the sonar device is
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adjustable, which sonar device is capable of
transmitting and/or receiving acoustic sonar
signals; and
d) a control arrangement for controlling the
at least one valve and/or the at least one flood port
of the underwater buoyancy apparatus.

The Rejection
Appellant seeks review of the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 1, 2, 5-10, 16, 17, 20, 21, and 30 as unpatentable over US
4,010,619 to Hightower (issued Mar. 8, 1977) and US 2003/0075096 A1 to
Leonard (published Apr. 24, 2003).

SUMMARY OF DECISION
We AFFIRM.

ISSUE
The Examiner rejected claims 1, 2, 5-10, 16, 17, 20, 21, and 30 as
unpatentable over a combination of the teachings of Hightower and Leonard.
Ans. 3. In relevant part, the Examiner found that Hightower describes an
underwater buoyancy apparatus having an auxiliary buoyancy chamber, but
that the chamber did not appear to have the particularly claimed chamber
structure, such as an air valve and a flood port. Ans. 3-4. However, the
Examiner found that Leonard describes a buoyancy device comprising the
particularly claimed chamber structure, with the air valve and flood port.
Ans. 4. Therefore, the Examiner concluded that it would have been obvious
to incorporate the particular chamber structure taught in Leonard into the
buoyancy chamber described in Hightower, in order to utilize the more
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effective design of the Leonard buoyancy chamber in Hightower's
operations. Id.
Appellant argues that the Examiner has failed to provide a proper
teaching, suggestion, or motivation to combine the references as proposed,
and that the Examiner has instead relied on hindsight analysis, non-
analogous art, art that teaches away from the claimed invention, as well as a
combination that would be unsatisfactory for its intended purpose. Appeal
Br., Reply Br., passim. Appellant does not separately argue the claims1.
Therefore, we select claim 1 as the representative claim, with claims 2, 5-10,
16, 17, 20, 21, and 30 standing or falling with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Therefore, the issue in this appeal is whether Appellant has
demonstrated that the Examiner has failed to provide reasoning with rational
underpinning in concluding that it would have been obvious to substitute the
buoyancy chamber of Leonard for the buoyancy chamber of Hightower.

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Leonard describes a buoyancy device 14 that utilizes gas valve 2 and a
flood port to adjust the volume of gas inside a buoyancy chamber 1 in
response to changes in depth, motion, or external forces. Para. 0022,
fig. 1. Processor 4 controls operation of the device 14 by allowing gas

1 Although Appellant mentions claim 21 in the Reply Brief at page 5,
Appellant merely recites a limitation of the claim without any explanation as
to how the Examiner's specific findings with respect to that particular
limitation are insufficient. Merely reciting the limitations of claims does not
constitute a separate argument. 37 C.F.R. § 41.37(c)(1)(vii).
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valve 2 to add or remove gas from chamber 1, displacing or allowing
water to flow out of or into chamber 1 via a flood port. Paras. 0039-
0041. The amount of displaced water affects the depth, motion, and
buoyancy of the chamber 1 and the object attached to the buoyancy
chamber. Para. 0030.
FF2 Hightower describes thrusters 204 and 205 that provide lateral and
longitudinal thrust, respectively, for maneuvering the lift module
(PCT 20). Col. 4, ll. 59-68. As such, thrusters 204 and 205 do not
appear to provide vertical (depth) thrust. Hightower additionally
describes an auxiliary buoyancy lift unit 206, which can be stored on
the aft end of PCT 20 for removal and use by the vehicle’s
manipulator 317 to accomplish special work tasks. Col. 5, ll. 3-6.
FF3 Leonard's variable buoyancy chamber provides a solution for
controlling the depth, motion, and buoyancy of an object in water to
which the chamber is attached. Para. 0021. For example, the device
can be used for lifting objects out of the water (para. 0058), assisting a
remotely operated vehicle in maintaining depth (para. 0059), or as part
of a vehicle for providing greater lift capability or buoyancy control
(paras. 0060, 0065).
FF4 One of ordinary skill in the art would understand that "buoyancy"
means "the ability to float in a liquid or to rise in a fluid." Collins
English Dictionary (2000). Thus, one of ordinary skill in the art
would understand that an underwater "buoyancy device," such as
Hightower's auxiliary buoyancy lift unit 206, is a device intended to
float and/or rise. Furthermore, one of ordinary skill in the art would
understand that the upward force of an object in water is proportional
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to the volume of liquid displaced by the object2. Thus, the net
buoyant force on an object can be controlled if the object can adjust
the volume of liquid it displaces.

PRINCIPLES OF LAW
Obviousness
While the requirement for a teaching, suggestion, or motivation (the
TSM test) to combine known elements in order to show that the combination
would have been obvious may be "a helpful insight," it cannot be used as a
rigid and mandatory formula. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418-19 (2007).
Rejections on obviousness grounds must be supported by "some
articulated reasoning with some rational underpinning" to combine the
known elements in the manner required in the claim at issue. Id. at 418.
However, "the 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." Id.
"[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." Id. at 417.

2 Precisely, Fnet = mg - ρVg, where the net force on the object is the sum of
the buoyant force (density of liquid * volume of displaced liquid * gravity)
and the object's weight (mass * gravity). Note that the equation uses "-"
because mg is a downward force and ρVg is an upward force.
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Analogous Art
"A reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem." In other words,
"familiar items may have obvious uses beyond
their primary purposes."
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (citations omitted). Moreover, in making a determination with regard
to obviousness, the inquiry is not limited to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant but whether it was obvious to a person of ordinary
skill in the art. Thus, "[u]nder the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed." KSR, 550 U.S. at 420.

Bodily Incorporation
In obviousness determinations, all of the features of the secondary
reference need not be bodily incorporated into the primary reference. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).

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ANALYSIS
Rationale for Combination
Appellant argues that the Examiner has not expressed a proper
motivation for combining the references. Appeal Br., passim. Appellant has
not demonstrated that the Examiner's reason for combining the references
lacks rational underpinning, however, because rational underpinning does
not require demonstration by explicit teachings, suggestions, or motivations.
See KSR, 550 U.S. at 418-19. The Examiner proposed to incorporate the
features of the particular buoyancy chamber described in Leonard into the
auxiliary buoyancy chamber in Hightower, which serves to improve the
Hightower invention by giving Hightower's auxiliary buoyancy chamber the
effective, precise depth control provided by the Leonard buoyancy chamber.
Ans. 4, 11; see FF1. By giving Hightower's buoyancy apparatus an
effective, precise buoyancy chamber, such as taught by Leonard, the
apparatus is improved in a straightforward and predictable way. See KSR,
550 U.S. at 417. It is well understood that effective depth control is
desirable in underwater environments, whether for a machine or a diver, and
Leonard's buoyancy chamber would provide the simple upgrade necessary to
achieve this result, in order to facilitate the special work tasks (see FF2),
requiring no more insight than the common sense to use an existing device
to improve a similar device in the manner the Leonard device was intended
to operate. See KSR, 550 U.S. at 417.

Hightower
Appellant argues that the Examiner's use of Hightower presents
certain deficiencies in the rejection. Appeal Br. 11-13. Appellant argues
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that Hightower's thrusters teach away from the present invention (Appeal Br.
11-12), that Hightower fails to describe a buoyancy system to raise or lower
the vehicle's position (Appeal Br. 12), and that Hightower's auxiliary
buoyancy unit 206 is not the same as the claimed buoyancy chamber
(Appeal Br. 12-13). Appellant's arguments are not persuasive.
Hightower's thrusters are used for lateral and longitudinal movement,
not for vertical (depth) movement, as can be shown by the location and
orientation of the thrusters 204 and 205 on top of the lift module (PCT 20.
FF2. The modification of Hightower's lift module (PCT 20) to include the
buoyancy chamber of Leonard, in place of the buoyancy lift unit 206, as
proposed by the Examiner, would therefore have no effect on the thrusters or
their method of operation, or vice versa.
Next, claim 1 does not require a buoyancy system that operates to
adjust the depth of a vehicle or platform, such as the PCT 20 or ship 10.
Instead, claim 1 merely requires a buoyancy apparatus comprising a
buoyancy chamber. It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Further, the Examiner does not find that the
Hightower reference teaches the details of the claimed buoyancy chamber.
See Ans. 3-4. Instead, the Examiner relies on the Leonard reference to teach
a buoyancy chamber, and on Hightower's tether 18 as the structure to adjust
the distance between the buoyancy apparatus (PCT 20) and the sonar device
30. Id. It is well settled that nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). To the extent that Appellant is arguing that
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Hightower’s buoyancy lift unit 206 is not the same as the claimed buoyancy
chamber because Hightower does not describe buoyancy lift unit 206 as
adjusting the depth of either the vehicle (ship 10) or the PCT 20, such a line
of argument is not persuasive. As noted above, claim 1 does not require
such use of the buoyancy apparatus.

Leonard
Appellant additionally argues that the Examiner's use of Leonard
presents certain deficiencies in the rejection. Appeal Br. 13-15. Appellant
argues that Leonard's buoyancy chamber 1 is not "analogous" to Hightower's
auxiliary buoyancy unit 206 because Hightower does not teach or suggest
that unit 206 is capable of taking in water and/or air to adjust depth (Appeal
Br. 13), that Leonard does not describe an apparatus tethered to a nautical
platform (Appeal Br. 13), that Leonard does not describe an apparatus
adjustably attached to an object (Appeal Br. 13-14), and that Leonard's
device would not be compatible with Hightower's system and would render
it inoperable (Appeal Br. 15-16). Appellant's arguments are not persuasive.
To the extent that Appellant is arguing that Leonard is non-analogous
art, we find that Leonard provides a solution to a known problem in the field
of endeavor and addressed by Appellant, namely, depth control. FF3; see
KSR, 550 U.S. at 420. Further, Hightower's auxiliary buoyancy unit 206
need not teach or suggest that it operates by taking in water and/or air.
While the particular details of Hightower's auxiliary buoyancy unit's mode
of operation are not disclosed, a person of ordinary skill in the art would be
able to infer that, at a minimum, Hightower's auxiliary buoyancy unit 206 is
a device capable of providing a buoyant force. FF4; see KSR, 550 U.S. at
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418-19. In addition, one of ordinary skill would recognize that a device that
can adjust the volume of water it displaces allows that device to provide
varying levels of buoyant force. FF4. Leonard's buoyancy chamber
provides varying levels of buoyant force by adjusting the volume of water it
displaces by using a gas valve and flood port. FF1. A person of ordinary
skill in the art would have recognized that if Hightower's auxiliary buoyancy
unit 206 provided a precise, variable amount of buoyant force, such as by
incorporating the details of the buoyancy chamber taught in Leonard, the
modified auxiliary buoyancy unit could better assist the underwater device
30 in Hightower's "special work tasks."
For example, in accomplishing the salvage operations of object 6
depicted in Hightower, figures 1 and 4, the auxiliary buoyancy unit 206
could be attached to object 6 by work vehicle 30 to float object 6 up to the
surface. If the buoyancy unit 206 were buoyant enough to lift object 6,
however, it may be too buoyant to allow PCT 20 to reach a desired depth.
By allowing the buoyancy of unit 206 to be variable, the buoyant forces
could be applied only when required. Therefore, a person of ordinary skill
considering the auxiliary buoyancy unit 206 of Hightower would have ample
reason to investigate potential types of buoyancy devices, especially those
that offer control over the level of buoyant force, such as Leonard's. See
also FF3, noting the various suggested uses of Leonard's chamber, including
floating objects up to the surface.
Appellant's argument that Leonard's device is not an apparatus
tethered to a nautical platform is not commensurate with the scope of claim
1. See In re Self, 671 F.2d at 1348. Claim 1 does not require that the
buoyancy chamber be adjustably attached to the nautical platform. Further,
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Appellant's argument that Leonard's device does not describe an adjustable
connection between the buoyancy apparatus and the sonar device is not
relevant to the Examiner's proposed combination. Instead, the Examiner
finds that tether 18 in Hightower corresponds to the limitation requiring that
the distance between the buoyancy apparatus and sonar device be adjustable.
See Ans. 3. The Examiner has not proposed altering or eliminating this
arrangement in combining Hightower and Leonard. In particular,
Appellant's argument that Leonard's device uses a static-length tether is not
germane to the Examiner's proposed combination of Hightower and Leonard
because the Examiner does not propose to incorporate this feature of
Leonard. See In re Keller, 642 F.2d at 425 (all of the features of the
secondary reference need not be bodily incorporated into the primary
reference).
Appellant's proffered scenario of multiple control systems conflicting
and rendering the Examiner's proposed combination inoperable is both
speculative and not based on the Examiner's proposed combination. The
Examiner does not propose to incorporate a separate control line running
from the boat to the buoyancy chamber, but instead contends that Leonard's
controller 4 corresponds to the "control arrangement" limitation. Ans. 4.
Claim 1 does not require that the "control arrangement" have any particular
structure, or require that the boat, buoyancy apparatus, or any other external
device be connected to or operate the control arrangement. Further, the
Examiner's proposed combination can assume "the inferences and creative
steps that a person of ordinary skill in the art would employ," such as
coordinating depth control mechanisms to operate in a cooperative manner.
KSR, 550 U.S. at 418. After all, “[a] person of ordinary skill is also a person
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of ordinary creativity, not an automaton.” Id. at 421. As such, Appellant
has not demonstrated that incorporating the details of Leonard's buoyancy
chamber into Hightower's buoyancy unit would render Hightower
inoperable.

CONCLUSIONS
The Examiner has articulated a reason with rational underpinning for
combining Hightower and Leonard, as proposed in the rejection of claim 1.
Appellant has not shown that the Examiner erred in determining that
Hightower and Leonard, in combination, render obvious a nautical system
having a buoyancy apparatus with a buoyancy chamber having an air valve
and a flood port, as recited in claim 1. Therefore, Appellant has also not
shown error in the Examiner’s rejection of claims 2, 5-10, 16, 17, 20, 21,
and 30, which fall with claim 1.

DECISION
The Examiner's decision is affirmed as to claims 1, 2, 5-10, 16, 17, 20,
21, and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED
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