SEA EAGLE BOATS, INC.

Patent Trials and Appeals Board

Aug 27, 2020

15851006 - (D) (P.T.A.B. Aug. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/851,006 12/21/2017 Cecil C. Hoge JR. 2196.1004 4247
21171 7590 08/27/2020
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
POLAY, ANDREW
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CECIL C. HOGE JR.
Appeal 2020-001098
Application 15/851,006
Technology Center 3600
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sea Eagle Boats, Inc.
Appeal Br. 2.
Appeal 2020-001098
Application 15/851,006
2
CLAIMED SUBJECT MATTER
The claims are directed to a fish skiff. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A fish skiff comprising:
an inflatable floor made of high pressure drop stitch
material;
inflatable sides made of high-pressure drop stitch material
attached to a top surface of the inflatable floor at port and
starboard sides of the inflatable floor, respectively; and
a rigid transom formed at a rear portion of the fish skiff,
the rigid transom being formed between the inflatable sides
configured to have an outboard motor mounted thereon.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Horan US 4,090,270 May 23, 1978
Hoge US 7,240,634 B1 July 10, 2007
Czarnowski US 8,082,871 B2 Dec. 27, 2011
Shimozono US 8,800,466 B1 Aug. 12, 2014
Mayer US 9,198,518 B1 Dec. 1, 2015
Gonzales US 9,434,453 B2 Sep. 6, 2016
Wundt US 2014/0150705 A1 June 5, 2014
Klare US 2015/0147925 A1 May 28, 2015
Pepper US 2017 /0197691 Al Jul. 13, 2017

Appeal 2020-001098
Application 15/851,006
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REJECTIONS2
Claim(s) 35 U.S.C. § Basis/Reference(s)
1, 2, 7, 8, 11 103 Wundt, Mayer
4 103 Wundt, Mayer,
Czarnowski
5 103 Wundt, Mayer, Hope
6 103 Wundt, Mayer, Pepper
9 103 Wundt, Mayer, Horan
10 103 Wundt, Mayer, Klare
12, 14 103 Wundt, Mayer,
Shimiozo
33, 134 103 Wundt, Mayer,
Gonzales

OPINION
Wundt in view of Mayer
All arguments in this appeal are premised on the supposed
shortcoming of the Examiner’s proposed combination of Wundt and Mayer.
App. Br. 4–12. The issue of precisely what constitutes a “top” or “side” of a
circle notwithstanding (Ans. 5–6), the Examiner and Appellant generally
agree that Wundt’s inflatable sides 102, 104 made of drop-stitch material
(Final Act. 4 (citing Wundt para. 42)) are not, or may not be, reasonably
regarded as “attached to a top surface” of Wundt’s inflatable floor comprised
of bottom tubes 110, as is required by claim 1. App. Br. 4; Final Act. 4.

2 The rejection under 35 U.S.C. § 112(b) has been withdrawn. Ans. 3.
3 It is noted that the Examiner mistakenly refers to claim 4 when addressing
the language of claim 3. See Final Act. 8.
4 Presently, claim 13 lacks antecedent basis for “the at least one seat”
because claim 13 depends from claim 1 as opposed to claim 3. Appellant
attempted to correct this in the non-entered amendment of Jan. 22, 2019.
Appeal 2020-001098
Application 15/851,006
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Appellant does persuasively argue that Mayer’s float chamber 309
having drop stich construction 310 depicted in Figure 9 (cited at Final Act.
4) is attached to what is more likely to be regarded as a bottom surface as
opposed to “a top surface” of deck chamber 111 having drop stich 112. App.
Br. 5–7; See Mayer col. 8, ll. 50–54; col. 9, ll. 9–18. However, as the
Examiner points out, a careful reading of the appealed action reveals that the
Examiner never took a position to the contrary. See Ans. 10 ([Appellant’s
argument] “does not contradict Examiner’s statement discussing an
observation made at a higher level of generalization ‘Mayer discloses
wherein drop-stitch layers are stacked such that are attached to a top surface
of the lower surface’ which does not mention the deck.” (quoting Final Act.
4)). Accordingly, from the Final Action and the Answer it is clear that the
Examiner never relied on Mayer as disclosing the precise subject matter of
attaching a watercraft side to a top surface of that watercraft’s floor. Rather,
Mayer was relied upon by the Examiner to illustrate that the more general
technique of stacking inflatable drop-stitch layers was known in the art. It is
from this determination that the Examiner concludes that the combined
teachings of the references would yield the subject matter claimed, including
sides “attached to a top surface of” a floor.
“[An obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a [decision
maker] can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–21 (2007). The Examiner reasons that it would have been
obvious to use Mayer’s layering technique to arrive at the claimed skiff
having drop-stitched sides attached to its top surface so as to “align the
principal axes of the load bearing threads of the different layers.” Appellant
Appeal 2020-001098
Application 15/851,006
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does not address the Examiner’s actual findings concerning Mayer; nor does
Appellant address the Examiner’s reasoning in support of the proposed
combination. Arguments must address the Examiner’s action. 37 C.F.R. §
41.37(c)(1)(iv)(“The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant”).
In effect, the only relevant argument presented in this appeal is that
Wundt supposedly teaches away from the combination proposed by the
Examiner. App. Br. 8. The statement in paragraph 3 of Wundt that Appellant
relies on for this assertion is: “[o]ne undesirable characteristic of prior
inflatable boats is that they provide a relatively unstable and low
performance hull structure.” This statement makes no reference to, and
therefore includes no criticism of, any specific types of hull structures to
which Wundt considers instability and low performance attributable. Ans.
12. At most, the cited portion of Wundt identifies generally undesirable hull
characteristics. Merely identifying undesirable characteristics with a high
level of generality is not the same as “teaching away” from a proposed
combination, particularly where, as here, there is no showing that the
proposed combination would necessarily result in those characteristics.
“[T]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Just
because “better alternatives” may exist in the prior art that “does not mean
that an inferior combination is inapt for obviousness purposes.” In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation omitted).
Appeal 2020-001098
Application 15/851,006
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CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 2, 7, 8, 11 103 Wundt, Mayer 1, 2, 7, 8, 11
4 103 Wundt, Mayer,
Czarnowski
4
5 103 Wundt, Mayer,
Hope
5
6 103 Wundt, Mayer,
Pepper
6
9 103 Wundt, Mayer,
Horan
9
10 103 Wundt, Mayer,
Klare
10
12, 14 103 Wundt, Mayer,
Shimiozo
12, 14
3, 13 103 Wundt, Mayer,
Gonzales
3, 13
Overall
Outcome
1–14

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED