Ex Parte Preisler et al

Patent Trial and Appeal Board

Aug 21, 2017

13762879 (P.T.A.B. Aug. 21, 2017)

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.
13/762,879 02/08/2013 Darius J. Preisler GIPH0146PUS1 4551
22045 7590 08/23/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER VASUDEVA, AJAY
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY KIDD and JOHN J. BRADY
Appeal 2017-000178
Application 13/762,8791
Technology Center 3600
Before THU A. DANG, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8 and 10-22, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is the applicant,
Global IP Holdings, LLC. App. Br. 1.
Appeal 2017-000178
Application 13/762,879
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to stiff or hard marine hulls and, in
particular, to watercraft such as kayaks that utilize such hulls. Spec. ^ 2.
Claim 1 is illustrative of the appealed subject matter and reads as follows:
1. A deep-drawn, marine hull having side walls and a
bottom wall comprising:
an outer skin having a waterproof outer surface;
an inner skin having a compartment-defining outer
surface; and
a shock absorbing, cellular core positioned between the
skins wherein the skins are bonded to the core by press
molding, wherein the cellular core has a 2-D array of cells, each
of the cells having an axis substantially perpendicular to the
outer surfaces, wherein thickness of deep-drawn side walls of
the hull is substantially uniform to maximize stiffness of the
hull, and the thickness of the cellular core is locally reduced
where the side walls transition into the bottom wall of the hull
so that the transition has a substantially continuous radius, the
cells absorbing energy of an impact at the outer surface of the
outer skin by deformably crushing, wherein air trapped within
cells which are not completely crushed or punctured by the
impact provide the hull with buoyancy to allow the hull to float
at the surface of a body of water.
The Examiner’s Rejections
Claims 1-8 and 10-22 stand rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 4-5.
Claims 1-8 and 10-22 stand rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement. Final Act. 5-7.
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Application 13/762,879
Claims 1-8 and 10-22 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventors or applicant regard as the invention. Final Act. 7-8.
ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellants’ contentions and the evidence of record. Appellants persuade us
the Examiner fails to establish the claims are unpatentable.
Written Description
The Examiner finds the Specification fails to reasonably convey to an
ordinarily skilled artisan that the inventor was in possession of the claimed
invention, in particular the limitation “the thickness of the cellular core is
locally reduced where the side walls transition into the bottom wall of the
hull so that the transition has a substantially continuous radius.” Final Act.
4-5. Specifically, the Examiner finds the Specification discloses reducing
the thickness of a hull section to obtain a specific shape, but does not
disclose reducing the thickness in the transition area between the side and
bottom walls or the reduced thickness area having a constant or consistent
radius. Id.
Appellants argue the Examiner erred because the Specification
incorporates U.S. Patent No. 6,981,863 (“the ’863 Patent”) by reference, and
the ’863 Patent discloses a deep-drawn bin with a continuous radius in the
transition area. App. Br. 16-17.
Appellants have persuaded us the Examiner erred. As noted by the
Examiner, the Specification discloses “[t]o have a substantially consistent
radius at the bottom wall of the kayak 110, the honeycomb core 116 may be
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Application 13/762,879
partially crushed during the deep-drawing.” Final Act. 5 (citing Spec. ^ 68).
Further, the Specification incorporates by reference the ’863 Patent (Spec.
^ 64), which discloses a deep-drawn bin where the transition from the side
wall to the bottom wall has a substantially constant radius (’863 Patent at
Fig. 8, 7:34-37). We agree with Appellants that an ordinarily skilled artisan
would understand from these disclosures that Appellants were in possession
of the claimed deep-drawn marine hull wherein “the thickness of the cellular
core is locally reduced where the side walls transition into the bottom wall of
the hull so that the transition has a substantially continuous radius.”
Accordingly, on the record before us and in view of the analysis
above, we are persuaded by Appellants’ contentions that the Examiner erred
in rejecting claim 1 as failing to comply with the written description
requirement. Therefore, we do not sustain the written description rejection
of claim 1, independent claim 16 which recites similar limitations, and
claims 2-8, 10-15, and 17-22 dependent therefrom.
Enablement
The Examiner rejects claim 1 for failing to satisfy the enablement
requirement, finding the Specification does not teach an ordinarily skilled
artisan to make or use the invention. Final Act. 6. Specifically, the
Examiner finds the Specification discloses reducing the thickness of a hull
section to obtain a specific shape, but this reduction does not necessarily
take place in the transition area. Id. The Examiner further finds the
Specification refers to crushing the core, but this does not necessarily mean
that the core would have a reduced thickness so that the transition can have a
constant radius. Id.
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Application 13/762,879
Appellants argue the Specification discloses the side walls have
uniform thickness and partial crushing may be necessary to maintain
uniform thickness in the bottom walls. App. Br. 19-20 (citing Spec. ^ 68).
Appellants argue an ordinarily skilled artisan would have understood from
this disclosure where to partially crush the core. Id. Appellants further
argue an ordinarily skilled artisan would understand that partially crushing
the core would reduce the thickness of the core and the Examiner’s
interpretation otherwise defies common sense. Reply Br. 3—4.
We agree with Appellants that an ordinarily skilled artisan would have
understood how to make and use the invention in light of Appellants’
disclosure. Accordingly, on the record before us and in view of the analysis
above, we are persuaded by Appellants’ contentions that the Examiner erred
in rejecting claim 1 as failing to comply with the enablement requirement.
Therefore, we do not sustain the enablement rejection of claim 1,
independent claim 16 which recites similar limitations, and claims 2-8, 10-
15, and 17-22, dependent therefrom.
Indefiniteness
The Examiner concludes the limitation “deep-drawn side walls”
renders claim 1 indefinite because “[i]t is not sufficiently clear if it is same
or different from the ‘side walls’ previously set forth in the preamble of the
claims.” Final Act. 7. The Examiner reasons that a deep-drawn hull may
have side walls that are not deep-drawn and, therefore, it is unclear if the
“deep-drawn side walls” refer back to the “side walls” in the preamble. Ans.
8.
Appellants argue the Examiner erred because the preamble recites a
deep-drawn marine hull having side walls, and the recited side walls serve as
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Application 13/762,879
an antecedent basis for the “deep-drawn side walls.” App. Br. 22-24.
Appellants argue the claim as a whole is unambiguous that the side walls are
deep drawn. Id. at 24.
We agree with Appellants’ contentions because an ordinarily skilled
artisan would have understood from the totality of claim 1 that the “deep-
drawn side walls” referenced in the “wherein” clause refer back to the same
“side walls” introduced in the preamble.
The Examiner also concludes the limitation “the thickness of the
cellular core is locally reduced where the side walls transition into the
bottom wall of the hull so that the transition has a continuous radius” renders
the claim indefinite. Final Act. 7-8. According to the Examiner, it is not
clear what shape or structure is defined by the term “continuous radius.” Id.
at 7.
Appellants argue the term “substantially continuous radius” is clear
and means an uninterrupted radius, as opposed to a continuously varying
radius which constantly changes. App. Br. 25. We agree with Appellants’
contentions that the term “substantially continuous radius,” in the context of
the claims and the Specification (see, e.g., Spec. ^ 68), is sufficiently clear to
an ordinarily skilled artisan and denotes a shape that contains an
uninterrupted, constant radius.
The Examiner also states “the transition” lacks antecedent basis and is
indefinite because the metes and bounds of “the transition” area are not
adequate defined. Final Act. 7-8. Appellants argue “the transition” refers
back to the term “transition” in the claim nine words prior. App. Br. 26.
Appellants argue this term is sufficiently clear and quantitative details are
not required to define the precise metes and bounds of the transition area.
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Id. We agree with Appellants’ contentions and, therefore, do not sustain the
indefiniteness rejection of claim 1, independent claim 16 which recites
similar limitations, and claims 2-8, 10-15, and 17-22, dependent therefrom.
DECISION
We reverse the decision of the Examiner to reject claims 1-8 and 10-
22.
REVERSED
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