Ex Parte Welch

Board of Patent Appeals and Interferences

Apr 23, 2009

11069615 (B.P.A.I. Apr. 23, 2009)

2
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN WELCH
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Appeal 2009-1142
Application 11/069,615
Technology Center 3600
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Decided:1 April 23, 2009
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Before: LINDA E. HORNER, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2009-1142
Application 11/069,615

2
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 1
rejection of claims 1-5, 7-9, 12-16 and 18-20 under 35 U.S.C. § 103(a) 2
(2002) as being unpatentable over Sheikholeslam (US 6,505,573 B1, issued 3
Jan. 14, 2003); from the final rejection of claim 6 under § 103(a) as being 4
unpatentable over Sheikholeslam and Burg (US 3,398,715, issued Aug. 27, 5
1968); from the final rejection of claims 10 and 17 under § 103(a) as being 6
unpatentable over Sheikholeslam and Peterson (US 3,780,989, issued Dec. 7
25, 1973); and from the final rejection of claim 11 under § 103(a) as being 8
unpatentable over Sheikholeslam and Henderson (US 3,742,490, issued Jun. 9
26, 1973). We have jurisdiction under 35 U.S.C. § 6(b) (2002). 10
We REVERSE. 11
Claims 1, 12 and 18 are independent. Claim 1 recites: 12
13
1. A device used when towing a user 14
with a watercraft comprising: 15
a tow-rope; 16
a tow-rope retraction device receiving said 17
tow-rope; 18
wherein said tow-rope retraction device is 19
configured to selectively retract said tow-rope with 20
sufficient force so as to accelerate and increase a 21
vertical lift available to a user being towed by said 22
watercraft on said tow-rope as said user is jumping 23
a wake of said watercraft. 24
25
Claim 12 recites a method of towing a user. The method includes timing a 26
retraction of a tow-rope to accelerate the user as the user performs a trick or 27
stunt while being pulled behind the watercraft. Claim 18 recites a system for 28
towing a user with a watercraft. The system includes “means for selectively 29
retracting a tow-rope with sufficient force to accelerate said user and 30
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Application 11/069,615

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increase a vertical lift available to said user being towed by said watercraft 1
on said tow-rope as said user is jumping a wake of said watercraft.” 2
In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court 3
set out factors to be considered in determining whether claimed subject 4
matter would have been obvious: 5
Under § 103, the scope and content of the prior art 6
are to be determined; differences between the prior 7
art and the claims at issue are to be ascertained; 8
and the level of ordinary skill in the pertinent art 9
resolved. Against this background, the 10
obviousness or nonobviousness of the subject 11
matter is determined. 12
Id., 383 U.S. at 17. 13
Sheikholeslam discloses a tow rope retriever system including a motor 14
which provides power to turn a reel to which a tow rope used to tow a 15
performer is attached. (Sheikholeslam, col. 6, ll. 29-38.) With regard to the 16
differences between the prior art and the subject matter of claims 1 and 18, 17
the Examiner ascertains that Sheikholeslam “does not disclose that the tow 18
rope retraction device is configured to selectively retract the [tow] rope with 19
sufficient force so as to accelerate and increase a vertical lift available to a 20
user towed by the watercraft on the [tow] rope as the user is jumping a wake 21
of the watercraft.” (Ans. 4; see also Ans. 8.) With regard to the differences 22
between the prior art and the subject matter of claim 12, the Examiner 23
ascertains that Sheikholeslam does not disclose “timing the retracting of the 24
tow rope to accelerate the user as the user performs a trick or stunt while 25
being pulled behind the watercraft . . . .” (Ans. 6.) 26
Appeal 2009-1142
Application 11/069,615

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The Appellant does not appear to rely on any objective evidence of 1
patentability in this appeal. (App. Br. 22.) As a consequence, the 2
Appellant’s burden in this appeal is to show that the Examiner has identified 3
insufficient evidence to support a conclusion of prima facie obviousness. In 4
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 5
F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner “need not seek out precise 6
teachings directed to the specific subject matter of the challenged claim” to 7
support the conclusion of obviousness, for the Examiner’s reasoning “can 8
take account of the inferences and creative steps that a person of ordinary 9
skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 10
418 (2007). That said, “rejections on obviousness grounds cannot be 11
sustained by mere conclusory statements; instead, there must be some 12
articulated reasoning with some rational underpinning to support the legal 13
conclusion of obviousness.” Kahn, 441 F.3d at 988. 14
This appeal turns on two issues: Has the Appellant shown that the 15
Examiner failed to articulate reasoning sufficient to support the conclusion 16
that it would have been obvious: (1) to configure Sheikholeslam’s tow rope 17
retriever system to perform the function of selectively retracting a tow rope 18
with sufficient force to accelerate the user and increase a vertical lift 19
available to a user being towed by the watercraft on the tow-rope as the user 20
is jumping a wake of the watercraft (see App. Br. 9 and 11); or (2) to time 21
the retraction of the tow rope to accelerate the user as the user performs a 22
trick or stunt while being pulled behind the watercraft (see App. Br. 7)? 23
The Examiner concludes that “[o]ne having ordinary skill in the art 24
would have recognized that timing the retracting of the tow-rope in 25
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Application 11/069,615

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Sheikholeslam et al would accelerate the user as the user performs a trick or 1
stunt while being pulled behind said watercraft so as to enhance the trick or 2
stunt.” (Ans. 11). The Examiner states this in a conclusory manner without 3
providing any corroborative citation to Sheikholeslam or any reasoning 4
sufficient to lead from the teachings of Sheikholeslam to this conclusion. 5
(See, e.g., id.) The Examiner doubtlessly is correct (see Ans. 11) in 6
concluding that one of ordinary skill in the art could have predicted that 7
retracting the tow-rope would accelerate the user upwardly across the wake. 8
Merely to say that this acceleration is a predictable result of retracting the 9
tow rope does not imply that retracting the tow rope was a known technique 10
for producing such acceleration which one of ordinary skill in the art would 11
have recognized. 12
The Examiner further concludes that the subject matter of claims 1 13
and 18 would have been nothing more than an obvious application of a 14
known technique to a piece of prior art, namely, Sheikholeslam, ready for 15
the improvement. (Ans. 11-12; see also KSR Int’l, 550 U.S. at 417.) Since 16
the Examiner’s conclusion of obviousness depends on the conclusion that 17
retracting the tow rope was a known technique for accelerating a user 18
jumping a wake, and since the latter conclusion lacks rational underpinning, 19
the conclusion of obviousness likewise lacks any such underpinning. The 20
Appellant has shown that the Examiner failed to articulate reasoning 21
sufficient to support the conclusion that it would have been obvious from the 22
teachings of Sheikholeslam alone to configure Sheikholeslam’s tow rope 23
retriever system to perform the function of selectively retracting a tow rope 24
with sufficient force to accelerate the user and increase a vertical lift 25
Appeal 2009-1142
Application 11/069,615

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available to a user being towed by the watercraft on the tow-rope as the user 1
is jumping a wake of the watercraft. The Appellant also has shown that the 2
Examiner failed to articulate reasoning sufficient to support the conclusion 3
that it would have been obvious from the teachings of Sheikholeslam alone 4
to time the retraction of the tow rope to accelerate the user as the user 5
performs a trick or stunt while being pulled behind the watercraft. 6
With regard to the rejection of claim 6, Burg discloses a ram 7
tensioning means including a piston or ram adapted to maintain a constant 8
tension in a tow-line dragging a neutrally buoyant seismic streamer. (Burg, 9
col. 3, ll. 43-52 and col. 5, ll. 35-49). The Examiner relies on Burg solely 10
for the suggestion to incorporate a piston into Sheikholeslam’s tow rope 11
retriever system, albeit to passively maintain a constant tension in the 12
towline rather than to actively retract the line. (See Ans. 9.) 13
With regard to the rejection of claims 10 and 17, Peterson discloses a 14
towing winch for maintaining controlled tension in a towing cable, as well as 15
providing for maintenance of a predetermined interval between a towing 16
vessel and a towed object. (Peterson, col. 3, l. 66 – col. 4, l. 2.) The 17
Examiner relies on Peterson solely for the suggestion to modify the control 18
system of Sheikholeslam’s tow rope retriever system so as to prevent the 19
retrieval device from further retracting the tow-rope if the length of the rope 20
reaches a predetermined minimum. (See Ans. 10.) 21
With regard to the rejection of claim 11, Henderson discloses an 22
electrical control system including a relay on a towing craft which controls 23
the extension of a signal flag. The electric control system additionally 24
includes leads spirally wound along the length of a tow rope between an 25
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Application 11/069,615

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actuating switch located near a water skier and the relay. (Henderson, col. 3, 1
ll. 51-57; col. 4, ll. 28-37 and 42-46; and col. 5, ll. 55-66.) The Examiner 2
relies on Henderson solely for the suggestion to modify the control system 3
of Sheikholeslam’s tow rope retriever system so as to replace the wireless 4
transmitter used by Sheikholeslam with a signal wire in the tow rope. (See 5
Ans. 10-11.) 6
The Examiner articulates no reasoning which would imply that Burg, 7
Peterson or Henderson remedies the deficiencies underlying the Examiner’s 8
conclusion regarding the patentability of claim 1, from which claims 4, 10 9
and 11 depend, and regarding the patentability of claim 12, from which 10
claim 17 depends. The Appellant has shown that the Examiner erred in 11
rejecting claims 1-5, 7-9, 12-16 and 18-20 under § 103(a) as being 12
unpatentable over Sheikholeslam; in rejecting claim 6 under § 103(a) as 13
being unpatentable over Sheikholeslam and Burg; in rejecting claims 10 and 14
17 under § 103(a) as being unpatentable over Sheikholeslam and Peterson; 15
and in rejecting claim 11 under § 103(a) as being unpatentable over 16
Sheikholeslam and Henderson. 17
18
DECISION 19
We REVERSE the Examiner’s decision rejecting claims 1-20. 20
21
REVERSED 22
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24
25
Appeal 2009-1142
Application 11/069,615

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