Ex Parte Yonover

Board of Patent Appeals and Interferences

Apr 10, 2006

10292461 (B.P.A.I. Apr. 10, 2006)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT N. YONOVER
_____________

Appeal No. 2006-0628
Application No. 10/292,461
______________

ON BRIEF
_______________

Before FRANKFORT, MCQUADE and CRAWFORD, Administrative Patent
Judges.

MCQUADE, Administrative Patent Judge.

DECISION ON APPEAL

Robert N. Yonover appeals from the final rejection (mailed
April 13, 2004) of claims 1-34, all of the claims pending in the
application.
THE INVENTION
The invention relates to “an emergency supplemental
flotation device that is compact enough when stowed to keep in a
person’s pocket” (specification, page 1). Representative claims
1, 13, 25 and 30 read as follows:

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Application No. 10/292,461

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1. Personal flotation device, comprising:

a) an inflatable spheroid balloon;

b) a strap directly secured to said balloon;

c) said strap including a loop into which a person's
arm, leg or upper body may be slipped.

13. Personal flotation device, comprising:

a) first and second inflatable spheroid balloons;

b) a strap with first and second ends secured to respective
said first and second balloons; and

c) said strap having a length sufficient to be placed
across a user's upper chest and slipped underneath each armpit
such that said balloons are disposed behind the shoulders of the
user.

25. A method for keeping a person afloat in water,
comprising:

a) providing an inflated spheroid balloon having a strap
directly secured to the balloon and with a loop attached thereto;

b) slipping the person's leg into the loop.

30. Personal flotation device, comprising:

a) an inflatable balloon;

b) a strap with one end directly secured to said balloon;

c) said balloon when deflated and said strap being compact
enough to fit in a person's pocket.

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THE PRIOR ART

The references relied on by the examiner to support the
final rejection are:
Decowski 1,289,123 Dec. 31, 1918
De Mattia 1,508,274 Sep. 09, 1924
Martin 2,619,303 Nov. 25, 1952
Demarco 3,279,419 Oct. 18, 1966
Bailey 5,030,153 Jul. 09, 1991
Vizintin et al. 5,393,230 Feb. 28, 1995
(Vizintin)
Biesecker 5,820,431 Oct. 13, 1998

THE REJECTIONS

Claims 1-4, 8, 13-16, 25, 27 and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Decowski in view of
Vizintin.
Claims 5-7 and 17-19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Decowski in view of Vizintin and
Demarco.
Claims 9 and 30-34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Decowski in view of Vizintin and
Biesecker.
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Decowski in view of Vizintin and Bailey.
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Claims 11, 12 and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Decowski in view of Vizintin and
Martin.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Decowski in view of Vizintin, Bailey and Martin.
Claims 23, 24, 26 and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Decowski in view of Vizintin
and De Mattia.
Attention is directed to the brief (filed April 6, 2005) and
answer (mailed July 5, 2005) for the respective positions of the
appellant and examiner regarding the merits of these rejections.
DISCUSSION

I. The examiner’s rejections
Each of the rejections on appeal rests, at least in part, on
a proposed modification of Decowski in view of Vizintin.
Decowski discloses a flotation device comprising a pair of
rings 10 constructed to receive the arms 11 of a swimmer 12, a
strap 13 attached to the rings and adapted to be secured by a
buckle 14 under the arms and about the chest of the swimmer, a
pair of rods 15 respectively connected at one end to the rings via
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Application No. 10/292,461

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swivel joints 16, and a pair of inflatable spherical floats 17
respectively attached to the free ends of the rods. As described
by Decowski,
The device is simple in construction and is readily
attached to the body and when worn by a person, the
device will prevent the person from drowning in whatever
position the rods 15 may be located while the said rods
and floats 17 are readily pushed rearwardly so as to
permit the person to swim forwardly in the usual manner
when desired. When the person is floating upon the
back, the float[s] 17 may be swung forwardly of the body
for floating upon the water substantially above the
chest of the wearer, while it will be obvious that the
float[s] 17 may be positioned laterally of the body with
the rods 15 outstretched for maintaining the person
upright and at which times the hands 19 of the person
may rest upon the float[s] 17 [page 1, lines 62-79].

Vizintin discloses a flotation device comprising a plurality
of floating elements 10 and a strap 12 for securing the floating
elements to a user’s body. Each of floating elements consists of
two opposed inflatable floating bodies 11a and 11b joined by
sidewalls 13 and arranged to allow the strap to pass therebetween
as shown, for example, in Figures 1 and 6.
In combining Decowski and Vizintin to reject the appealed
claims, the examiner submits that it would have been obvious “to
form the straps of Decowski to be directly connected to the
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inflatable [floats 17] as taught by Vizintin et al for maximum
stability of the floating element, greater stability, most
suitable positioning and a greater freedom of movement to allow
improved swimming” (answer, page 3). In response to the
appellant’s argument that the combined teachings of Decowski and
Vizintin would not have suggested this combination, the examiner
contends that
the motivation for the combination is specifically
contained in the applied reference[s] and would have
been obvious to a person of ordinary skill in the art at
the time the invention was made because directly
connecting the straps to the floats would provide for
maximum stability of the floating element, greater
stability, most suitable positioning and greater freedom
of movement to allow improved swimming (note
specifically Vizintin et al, column 2, lines 42-46, 55-
61). Such a combination would not destroy the device of
Decowski, simply improve the device, as stated above
[answer, page 6].

The passage in Vizintin relied on by the examiner to supply
the requisite motivation for the combination with Decowski reads
in context as follows:
Furthermore, a greater stability of the floating
element is ensured in relation to the strap, which
always remains pressed and clamped between the two
inflatable floating bodies [11a and 11b] when the latter
have been inflated.
The two floating bodies, when inflated, are in a
condition of mutual compression along their surfaces of
mutual contact.
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In this way, even if one of the two floating bodies
is partly deflated, the expansion of the other floating
body compensates the deflation and ensures that enough
floating power is retained and that the strap or belt is
continuously clamped.
According to a variant the outer floating body has
bigger dimensions than the inner floating body. A
maximum floating power is achieved in this way, the
surface of contact with the user's body being kept small
and at the same time a greater freedom of choice being
allowed for the most suitable positioning and a greater
freedom of movement being obtained [column 2, lines 42-
61].

This passage makes it quite clear that the stability and
other desirable characteristics discussed therein relate
specifically to the particular construction of Vizintin’s floating
elements 10 and to the unique manner in which they interact with
the strap 13. Given the fundamental differences between the
floating elements 10 and Decowski’s spherical floats 17, one of
ordinary skill in the art would not have appreciated Vizintin’s
teachings in this regard to have any practical relevance to the
Decowski device. Indeed, the proposed modification of the
Decowski device in view of Vizintin seemingly would require the
elimination of Decowski’s rings 10 and rods 15. The loss of these
elements would radically alter the nature of the Decowski device
and the manner in which it is intended to be used. In this light,
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it is evident that the only suggestion for combining Decowski and
Vizintin as proposed by the examiner stems from hindsight
knowledge impermissibly derived from the appellant’s disclosure.
As a result of this basic flaw in the examiner’s application
of the references, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1-4, 8, 13-16, 25, 27 and 28 as being
unpatentable over Decowski in view of Vizintin, the standing
35 U.S.C. § 103(a) rejection of claims 5-7 and 17-19 as being
unpatentable over Decowski in view of Vizintin and Demarco, the
standing 35 U.S.C. § 103(a) rejection of claims 9 and 30-34 as
being unpatentable over Decowski in view of Vizintin and
Biesecker, the standing 35 U.S.C. § 103(a) rejection of claims 10
and 20 as being unpatentable over Decowski in view of Vizintin and
Bailey, the standing 35 U.S.C. § 103(a) rejection of claims 11, 12
and 22 as being unpatentable over Decowski in view of Vizintin and
Martin, the standing 35 U.S.C. § 103(a) rejection of claim 21 as
being unpatentable over Decowski in view of Vizintin, Bailey and
Martin, or the standing 35 U.S.C. § 103(a) rejection of claims 23,
24, 26 and 29 as being unpatentable over Decowski in view of
Vizintin and De Mattia.
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II. Remand to the examiner

This application is remanded to the examiner pursuant to
37 CFR § 41.50(a)(1) for consideration of the following matters.
Arguably, the flotation device recited in independent claim
13 finds full response in the flotation device disclosed by
Decowski, with the limitations in the claim relating to the
spheroid balloons and strap appearing to be readable on
Decowski’s inflatable spherical floats 17 and strap 13,
respectively. As depicted in Figure 1 of the reference, the
strap 13 ostensibly has first and second ends secured to the
balloons/floats 17 and a length sufficient to be placed across a
user’s upper chest and slipped underneath each armpit such that
the balloons/floats 17 are disposed behind the shoulders of the
user, all as recited in claim 13. On remand, the examiner should
consider whether Decowski, viewed in this manner, and taken alone
or in combination with other references, would support a prior art
rejection of claim 13 and any of the claims depending therefrom.
In the same vein, the flotation device recited in independent
claim 30 conceivably finds full response in the flotation device
disclosed by Vizintin, with the limitations in the claim
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pertaining to the inflatable balloon and strap appearing to be
readable on one of Vizintin’s inflatable floating elements 10 and
strap 12, respectively. As shown in Figure 4 of the reference,
the strap 12 has at least one end directly secured to a
balloon/floating element 10. Furthermore, it is not apparent why
the balloons/floating elements 10 when deflated and the strap 12
would not be inherently compact enough to fit in a person’s pocket
as recited in claim 30. On remand, the examiner should consider
whether Vizintin, viewed in this manner, and taken alone or in
combination with other references, would support a prior art
rejection of claim 30 and any of the claims depending therefrom.
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SUMMARY

The decision of the examiner to reject claims 1-34 is
reversed and the application is remanded to the examiner for
further consideration.

REVERSED AND REMANDED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

JPM/vsh
Appeal No. 2006-0628
Application No. 10/292,461

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