Ex Parte YonoverDownload PDFBoard of Patent Appeals and InterferencesApr 10, 200610292461 (B.P.A.I. Apr. 10, 2006) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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: Appeal No. 2006-0628 Application No. 10/292,461 2 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. Appeal No. 2006-0628 Application No. 10/292,461 3 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. Appeal No. 2006-0628 Application No. 10/292,461 4 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 Appeal No. 2006-0628 Application No. 10/292,461 5 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 Appeal No. 2006-0628 Application No. 10/292,461 6 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. Appeal No. 2006-0628 Application No. 10/292,461 7 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, Appeal No. 2006-0628 Application No. 10/292,461 8 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. Appeal No. 2006-0628 Application No. 10/292,461 9 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 Appeal No. 2006-0628 Application No. 10/292,461 10 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. Appeal No. 2006-0628 Application No. 10/292,461 11 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 12 SHLESINGER, ARKWRIGHT & GARVEY LLP 1420 KING STREET SUITE 600 ALEXANDRIA, VA 22314 Copy with citationCopy as parenthetical citation