Ex Parte Wesley

Board of Patent Appeals and Interferences

Jun 24, 2008

11381208 (B.P.A.I. Jun. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM P. WESLEY
____________

Appeal 2008-1313
Application 11/381,208
Technology Center 3600
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Decided: June 24, 2008
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William P. Wesley (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1 through 19. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).
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THE INVENTION
The Appellant’s invention is drawn to a system for launching and
retrieving an auxiliary vessel 37 from the water including a main vessel 9
having a transom 15, a base platform 13 attached to the transom 15, a
support frame 21, and a support platform 31 that holds the auxiliary vessel
37 (Spec. 11, ll. 21-28; Spec. 12, ll. 18-19; and fig. 1). The support platform
31 rotates from a first position, for launch or retrieval as shown in Figure 2,
to a second position, for storage, as shown in Figure 1 (Spec. 12, ll. 25-27).
The motion of platform 31 is due to the resulting torque (moment of force)
generated by the weight 33 (force) of platform 31 about the axis of rotation
of a first pivoting connection 21d (Spec. 12, ll. 23 through Spec. 13, l. 5 and
figs. 1 and 2). As the platform 31 moves in the direction of arrows 28 and
30, the support frame 21 contracts and expands along its main axis 29 and its
cross axis 29a (Spec. 15, ll. 3-17 and figs. 1, 1A, 2, and 3).
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A system for launching and retrieving an auxiliary vessel
in the fore aft direction of a main vessel comprising,
a main vessel, including a main vessel hull arranged in a
fore aft direction; said main vessel hull including a
transom on the aft part of said main vessel hull;
a base attached to said main vessel proximate said
transom;
a support frame;
said support frame including a first pivoting connection
to said base;
a support platform;
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said support frame including a second pivoting
connection to said support platform;
said support frame connected to said base by said first
pivoting connection for displacement of said support
platform in a displacement path in said main vessel fore
aft direction, and from a first position for launch or
retrieval, displaced outboard from said main vessel hull
and outboard of said transom, to a second position for
storage or carry of an auxiliary vessel, inboard of said
main vessel hull and inboard of said transom.

THE REJECTIONS
The Appellant seeks review of the Examiner’s rejections of claims 1
through 19 under 35 U.S.C. § 112, first paragraph, for failure to comply with
the written description requirement.1
The Examiner provides reasoning in support of the rejections in the
Answer (mailed February 22, 2007). The Appellants present opposing
arguments in the Appeal Brief (filed November 13, 2006) and the Reply
Brief (filed March 7, 2007).

OPINION
The sole issue in this appeal is the Examiner's rejection of claims 1
through 19 under 35 U.S.C. § 112, first paragraph, as failing to comply with

1 The Final Rejection mailed on September 26, 2006 also included the
rejection of claims 13, 14, 16, 17, and 19 under 35 U.S.C. § 112, second
paragraph for indefiniteness. In the Answer, the Examiner did not
re-state this rejection. Therefore, for the purpose of the instant appeal, the
rejection of claims 13, 14, 16, 17, and 19 under 35 U.S.C. § 112, second
paragraph for indefiniteness is considered to have been withdrawn by the
Examiner.
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the written description requirement. The Examiner’s written description
rejection is based on: (1) lack of description of the means or mechanism that
causes the inclination of the support platform 31 and thereby the expansion
and contraction of the support frame 21 (Ans. 3, 7 and 9); and (2) lack of
description of the production of a “torque” (Ans. 5, 6, and 8).
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that the applicant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “The invention is, for
purposes of the ‘written description’ inquiry, whatever is now claimed.” Id.
In response to the Examiner’s first point, the Appellant argues that the
Examiner has failed to provide factual basis that would point to subject
matter in the claims which lacks written description (App. Br. 12-13 and 19-
20). Furthermore, the Appellant takes the position that the expansion and
contraction of the frame 21 is fully described in the instant application as a
“complex translational movement in the linear and rotational directions”
(App. Br. 13-14, citing Spec. 15, l. 1-30 through Spec. 16, l. 15).
The Appellant and the Examiner seem to disagree as to whether a
means or mechanism for inclining the support platform 31, and hence
expanding and contracting the support frame 21, is an essential element of
the Appellant’s claimed invention. We find that it is not. A review of the
claimed invention indicates that the claims are drawn to “[a] system for
launching and retrieving an auxiliary vessel… ." Furthermore, the claimed
invention does not positively recite a "mechanism or machine" for inclining
the support platform and thereby causing the platform frame to expand or
collapse. Moreover, the Appellant specifically argues that the “mechanism
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for initiating such pivoting of the frame from its storage position” and hence
initiating the expansion and contraction of the support frame “could be any
suitable means from the force applied by a person using muscle power to
any other motive power as would be know[n] to those skilled in the art”
(Reply Br. 6).
We do not imply that a force-inducing “means or mechanism” is not
required to initiate the expansion and contraction of the support frame.
However, because the Appellant has not recited the means or mechanism for
pushing the support frame platform 31 out of balance as part of the claimed
invention, contrary to the Examiner’s position, we find that such a means or
mechanism need not be disclosed in order to convey with reasonable clarity
to one ordinarily skilled in the art that the Appellant was in possession of the
claimed invention at the time the application was filed.
With respect to the Examiner’s second point, the Examiner contends
that although “[a] moment and [a] torque are clearly related” (Ans. 5) a
torque cannot be produced about an unrestrained pivot such as pivot axis
21d (Ans. 5). The Examiner defines "torque" as a "torsional moment" that
"tends to twist a circular member or shaft about its longitudinal axis which
causes an internal distribution of stress...[t]he resultant of such a stress
distribution in the shaft is called the torque" (Ans. 8). In response, the
Appellant defines a "torque" to be the "product of a force acting through a
moment arm about an axis" (App. Br. 16). The Appellant and the Examiner
seem to disagree as to the definition of a “torque.”
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
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light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). A “torque” is a “force that produces or tends to produce rotation or
torsion” (Merriam Webster’s Collegiate Dictionary 1245 (Tenth Ed. 1997)).
Although the dictionary definition appears to include both interpretations of
a “torque” as set forth by the Appellant and the Examiner, we find the
Appellant’s definition to be consistent with the Specification. The crux of
the Appellant’s invention is the rotational motion of the support platform 31
in the direction of arrows 28 and 30. Such rotation is the result of the weight
33 (a force) of the platform 31 creating a moment of force (a “torque”) about
the rotational axis of pivot 21d (moment arm about an axis) (Spec. 12, l. 23
through Spec. 13, l. 5 and figs. 1 and 2). Therefore, we find the Appellant’s
disclosure to convey with reasonable clarity to one ordinarily skilled in the
art that the torque produced by the weight of platform 33 is a moment of
force causing a rotational motion of platform 33 about pivot 21d.
For the reasons discussed above we conclude that the rejection of
claims 1-19 under 35 U.S.C. § 112, first paragraph for failure to comply with
the written description requirement cannot be sustained.

DECISION
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph for
failure to comply with the written description requirement is reversed as to
claims 1 through 19.

REVERSED
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JRG

JOEL I ROSENBLATT
445 11TH AVENUE
INDIALANTIC, FL 32903