Ex Parte Venables et al

Patent Trial and Appeal Board

Sep 11, 2018

14062634 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/062,634 10/24/2013 John D. Venables
24126 7590 09/13/2018
ST. ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02862-P0021B 3166
EXAMINER
WILTEY, NICHOLAS K
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN D. VENABLES, CHRISTOPHER M. PAPPAS, and
BENTON H. SCHAUB JR.
Appeal2018-001653
Application 14/062,634 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 7, 8, 10-20, and 22-29. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest is Naiad Maritime
Group, Inc." Appeal Br. 2.
Appeal2018-001653
Application 14/062,634
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants' invention relates to "a ship motion control system
[that] may rely on calculating a prediction of anticipated sea conditions so
that adjustments can be made in advance," which "includes both sensed
approaching conditions ( e.g., already existing conditions approaching ship)
and calculated future conditions (e.g., not yet existing conditions)."
Spec. ,r 17.
Claims 1, 20, and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A motion control system for a seafaring vessel,
compnsmg:
one or more sensors generating current sea condition data;
a storage having historical sea condition data stored
thereon;
at least one control system; and
a computer having:
an analyzer receiving the current sea condition data and
the historical sea condition data and determining a not yet
existing predicted sea condition anticipated to be encountered by
the vessel in the future based at least in part on both the current
sea condition data and the historical sea condition data;
a calculator calculating one or more commands in
preparation for the predicted sea condition determined by the
analyzer; and
an interface communicating the one or more commands
calculated by the calculator to the at least one control system;
wherein the at least one control system automatically
implements at least one of the one or more commands calculated
by the calculator in response to the predicted sea condition
determined by the analyzer;
wherein the one or more sensors are configured to measure
sea conditions in the seafaring vessel's near and far fields when
the vessel is underway to characterize sea conditions such that
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Application 14/062,634
the sea condition data relates to sea conditions in both the
seafaring vessel's far field and near field, the far field being
defined as four or more wavelengths from the vessel;
the near field being between the vessel and the far field;
wherein the not yet existing predicted sea condition is in
the far field.
Rejections
The following Examiner's rejections are before us for review. 2
Claims 1-5, 7, 8, 10, 12, 14--20, and 22-28 stand rejected under
35 U.S.C. § 103 as unpatentable over Spinka (US 5,787,832, iss. Aug. 4,
1998) and Smith (US 7,029,340 B2, iss. Apr. 18, 2006).
Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over
Spinka, Smith, and Oehlgrien (US 2010/0094491 Al, pub. Apr. 15, 2010).
Claims 13 and 29 stand rejected under 35 U.S.C. § 103 as
unpatentable over Spinka, Smith, and Chun (US 8,215,252 B 1, iss. July 10,
2012).
PRINCIPLES OF LAW
"After a prima facie case of obviousness has been made and rebuttal
evidence submitted, all the evidence must be considered anew." In re Eli
Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) (citing In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984)); Piasecki, 745 F.2d at 1472 ("Prima facie
obviousness is a legal conclusion, not a fact. Facts established by rebuttal
evidence must be evaluated along with the facts on which the earlier
2 The Examiner has withdrawn the rejections of: claims 1, 20, and 23 under
35 U.S.C. § 112; and claims 1-5, 7, 8, 10-20, and 22-29 under 35 U.S.C.
§ 101. Ans. 2.
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Application 14/062,634
conclusion was reached, not against the conclusion itself." ( citations
omitted)).
ANALYSIS
For the rejections of independent claims 1, 20, and 23, the Examiner's
rationale for combining the teachings of Spinka and Smith is embodied in
the following statement in the Answer:
In this case, Spinka is drawn towards a system of controlling a
stabilization system based on waves in the vicinity of vessel. The
Smith reference determines an optimal travel path while
"observing near, mid and far field sea surface." Therefore the
combination teaches the metes and bounds of the claims and the
motivation to combine the Spinka and Smith references was in
order to ensure a safe travel of a ship. The motivation to
combine stems from an ordinary person of skill in the art and it
would further be obvious to modify Spinka to search the far field
as taught by Smith due to the fact that Spinka only has near field
capabilities and by modifying Spinka to search the far field, the
system of Spinka would be able to predict and determine smooth,
calm waters so you don't have to use the stabilizing system of
Spinka as much which therefore would improve the durability of
the Spinka system. The durability would be improved through
the searching of the far field and determining the sea conditions
in the future in order to determine an optimal travel path of which
would lead to a safer path being traveled by the vessel and then
by travelling safer or calmer waters, the system of Spinka would
last longer as a result of not having to perform rapid transitions
of the stabilizers as well as reducing the total number of
stabilization controls that would have to be performed.
Therefore a person of ordinary skill in the art would modify
Spinka and see the modification as beneficial in order to ensure
safe travel of the ship.
Ans. 4--5 (emphases added); see also Non-Final Act. 6-7, 11-12 (mailed
Feb. 23, 2017).
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Application 14/062,634
The Appellants argue that the Examiner's rationale for combining the
teachings of Spinka and Smith is based on impermissible hindsight. See
Appeal Br. 22-23; Reply Br. 2-5. The Appellants point out that "Spinka is a
reactive system that only seeks to control the positioning of the floats, not a
system that is designed to adjust course." Appeal Br. 19. The Appellants
point out that "Smith expressly seeks to generate energy from waves, and
would therefore seek out high wave energy. Particularly, Smith describes a
regenerative surfing system and a 'vertical sculling hydrofoil boat [which]
utilizes the regenerative braking system and includes a vertical sculling drive
system for both propulsion and regenerative braking."' Appeal Br. 20
( citing Smith, Abstract). The Appellants add that Smith would teach a
skilled artisan to "seek out areas of high wave energy rather than avoid
them," which "runs directly contrary to the motivation examiner cites to
'ensure safe travel of a ship."' Id. The Appellants' argument is persuasive.
In this case, we fail to see, and the Examiner fails to explain
persuasively, why one of ordinary skill in the art would apply Smith's
teachings, which concern regenerating surfing/braking to harvest energy, to
predict and determine smooth and calm waters for the benefit of a reactive
stability system for a vessel, as taught by Spinka.
Further, in the Appeal Brief the Appellants provide a Declaration of
John D. Venables under 37 C.F.R. § 1.132 ("Deel. J. Venables").3 Appeal
Br. 38 (Evidence App.). This Declaration, which was provided during
prosecution and presented as evidence in the Appeal Brief, "provides an
explanation why one of skill would not seek to modify Spinka ... to reach
3 The Declaration of John D. Venables was originally filed August 2, 2016,
along with a Response to Office Action ("Response").
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the claims." Id. at 30. The Appellants have pointed out repeatedly that the
Examiner failed to consider the Declaration of John D. Venables. Response
10; Appeal Br. 18; Reply Br. 1. See Manual of Patent Examining Procedure
(MPEP) § 2145 (9th ed., rev. 8, Jan. 2018) ("In re Beattie, 974 F.2d 1309,
1313 ... (Fed. Cir. 1992) (Office personnel should consider declarations
from those skilled in the art ... opining that the art teaches away from the
invention.)"). Upon review of the prosecution history, we fail to see any
indication that the Examiner has considered the Declaration of John D.
Venables as evidence. See, e.g., Ans. 2-3.
Thus, we do not sustain the Examiner's rejection of claims 1-5, 7, 8,
10, 12, 14--20, and 22-28 as unpatentable over Spinka and Smith. For
similar reasons as discussed above we also do not sustain the rejections of:
claim 11 under 35 U.S.C. § 103 as unpatentable over Spinka, Smith, and
Oehlgrien; and claims 13 and 29 under 35 U.S.C. § 103 as unpatentable over
Spinka, Smith, and Chun.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-5, 7, 8,
10-20, and 22-29.
REVERSED
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