James Mangano

Patent Trials and Appeals Board

Sep 24, 2021

2021002209 (P.T.A.B. Sep. 24, 2021)

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.
15/728,423 10/09/2017 James Irving Mangano 1169-02 1027
78519 7590 09/24/2021
DALE JENSEN PLC
606 BULL RUN
STAUNTON, VA 24401
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
DALERJENSEN@GMAIL.COM
djensen@dalejensenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES IRVING MANGANO

Appeal 2021-002209
Application 15/728,423
Technology Center 3600
Before DANIEL S. SONG, STEFAN STAICOVICI, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, 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 1–11, which constitute all of the claims
pending in the application. Appeal Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the sole inventor, James Mangano, as
the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The application is titled “Systems, Devices, and/or Methods for
Managing Watercraft.” Spec. 1, Title. Claims 1, 10, and 11 are
independent. Appeal Br. (App. A-1) (“Claims App.”). We reproduce claim
1, below:
1. A system comprising:
a plurality of discs coupleable to a first surfboard, wherein,
when the plurality of discs is coupled to the first surfboard, each
of the plurality of discs deflects a flow of water along the first
surfboard such that the first surfboard rides higher relative to a
water surface compared to a second surfboard not coupled to
discs, wherein:
each of the plurality of discs has a cross section that
comprises two substantially linear edges that meet at
substantially right angles; and
a curvilinear edge that meets each of the two substantially
linear edges, the curvilinear edge substantially lacking any
linear portion.
Id. (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rourman US 2009/0029610 A1 Jan. 29, 2009
Morgan US 3,747,138 July 24, 1973
See Final Act. 7–8.

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REJECTIONS2
The following rejections are before us on appeal:
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–11 112(a) Written Description
1–11 103 Morgan, Rourman
Final Act. 6–8.
OPINION
1. Written Description Rejection
The Examiner rejects claims 1–11 for failing to comply with the
written description requirement under 35 U.S.C. § 112(a). Final Act. 6. In
particular, the Examiner finds that the “claims contain new matter as
explained in paragraph 10 of this office action.” Id. (emphasis omitted).
In paragraph 10 of the Final Office Action, the Examiner objects to an
amendment filed on May 29, 2019, for introducing new matter. Id. at 5
(emphases added); see also infra § 2 (addressing the new matter objection).
In particular, the Examiner finds that
[the claims recite] a “curvilinear edge substantially lacking any
linear portion” which is considered new matter since such an
explicit limitation is not found in the original disclosure of the
application as filed; the original disclosure did not expressly
exclude a linear portion or limit a curvilinear edge to
substantially lacking any linear portion as presented in the
claims. It is noted that the definition of curvilinear according to
dictionary.com is consisting of or bounded by curved lines;
hence, a straight line bounded by curved lines would be
considered curvilinear and applicant did not expressly exclude a

2 In addition to the rejections, the Examiner objects to: (1) an amendment
filed on May 29, 2019, for containing new matter; (2) the drawings; (3) the
Specification; (4) and the claims. See Final Act. 2–6. Appellant appeals
these objections. See Appeal Br. 5–9. We address these objections in our
Decision.
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linear portion or limit a curvilinear edge to substantially lacking
any liner [sic] portion in the disclosure of the application as
originally filed. Therefore, such is considered new matter and
applicant remove cancel this new matter.
Id. at 5–6 (emphases omitted).
In response to the rejection (and corresponding new matter objection),
Appellant submits an annotated version of its Figure 2C, and states that “a
cursory review of FIG. 2C conveys to one skilled in the art that the claimed
curvilinear edge substantially lacks any linear portion.” Appeal Br. 9. We
reproduce the annotated version of Appellant’s Figure 2C, below:

Id. at 6; see also Reply Br. 3 (reproducing the same). Figure 2C depicts a
top view of a disc. Spec. 2. As shown by Appellant’s annotations, the disc
has three edges; a “curvilinear edge,” a “first substantially linear edge,” and
a “second substantially linear edge” joined together such that each of the
“edges” meet one another.
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In the Answer, the Examiner explains that the negative limitation,
“curvilinear edge substantially lacking any linear portion,” “is considered
new matter since such an explicit negative limitation is not found in the
disclosure of the application as originally filed.” Ans. 3–4.
Appellant has the better position. Under proper circumstances,
drawings alone may provide a written description of an invention as required
by 35 U.S.C. § 112(a). See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991); see also Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858,
866 (Fed. Cir. 1993) (drawings provided substantial evidence of disclosure
of leadless SIMMs).
In the present case, the Specification describes that “[e]ach of
plurality of discs . . . can comprise a curvilinear edge.” Spec. 4 (referencing
outside edges 3A, 4A, 5A, and 6A of Fig. 1). The Specification further
defines “curvilinear” as “comprising or bounded by curved lines.” Id. at 7.
By describing edges 3A, 4A, 5A, and 6A as “curvilinear” and being
“bounded by curved lines,” we find that the “curvilinear edge” shown and
described provides subject matter support for the claimed limitation. The
Examiner’s position that a straight line bounded by curved lines may be
“curvilinear” (see Final Act. 5–6) is unreasonably broad and inconsistent
with the Specification, as well as the plain and ordinary meaning of
“curvilinear,”3 which is consistent with the Appellant’s definition. The
record does not support the Examiner’s position that a “curvilinear” line

3 curvilinear: 1 : consisting of or bounded by curved lines.
https://www.merriam-webster.com/dictionary/curvilinear (last visited Sept.
21, 2021).
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comprises straight (or linear) lines. Notably, Appellant’s Figures 3A, 4A,
5A, and 6A depict a “curvilinear edge” without any linear portions.
Accordingly, we agree with Appellant that the originally-filed
disclosure would have conveyed to a skilled artisan that Appellant had
possession of the claimed “curvilinear edge substantially lacking any linear
portion.” Appeal Br. 9; see also Reply Br. 2–4.
We reverse the written description rejection of claims 1–11.

2. New Matter Objection
As discussed above, and in addition to rejecting claims 1–11 as failing
to comply with the written description requirement, the Examiner objected
to an amendment filed on May 29, 2019, for introducing new matter. Final
Act. 5. In particular, the Examiner objected to the amendment to the claims
for reciting “curvilinear edge substantially lacking any linear portion.” See
id.
The MPEP provides that “[i]f both the claims and specification
contain new matter either directly or indirectly, and there has been both a
rejection and objection by the examiner, the issue becomes appealable and
should not be decided by petition.” MPEP § 2163.06(II).
Accordingly, and consistent with our decision to reverse the
Examiner’s written description rejection, we also do not sustain the
Examiner’s new matter objection to the amendment filed on May 29, 2019.
See Final Act. 5.

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3. Prior Art Rejection
The Examiner rejects claims 1–11 as unpatentable over Morgan in
view of Rourman. Final Act. 7. We reproduce Morgan’s Figures 1 and 2,
below:

Figure 1 depicts a top plan view of Morgan’s surfboard “improved with
lifting hydrofoils” while Figure 2 depicts a side view of that same surfboard.
Morgan 1:47–49. The Examiner finds that Morgan’s fins/foils (4, 6, 5a, 5b,
6a, and 6b) are “coupleable to a surfboard and each deflects a flow of water
along the surfboard such that the surfboard rides higher relative to a water
surface as compared to a surfboard without the fins/foils.” Final Act. 7.
The Examiner acknowledges, however, that Morgan does not disclose
the fins/foils being “disc shaped nor the specific cross-section for two
substantially linear edges meeting at substantially right angles and a
curvilinear edge that meets each of the two substantially linear edges with
the curvilinear edge substantially lacking any linear portion.” Id. To
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address this missing limitation, the Examiner relies on Rourman’s teachings.
Id.
The Examiner finds that Rourman discloses “a surfboard with
horizontal fins/foils which are partially curved and disc shaped and can
include a curvilinear edge (or partially circular edge) and two linear edges
meeting at substantially right angles.” Id. at 7–8. Although the Examiner
does not provide any direct citations to Rourman other than to “see figures”
(see id.), we reproduce Rourman’s “Photo F” or “Figure F,” below:

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Rourman’s Figure 4 (or Photo F) is a “view of the area between the bottom
hull of the surfboard, and the top of the horizontal fin.” Rourman ¶ 53.
In combining Morgan with Rourman, the Examiner reasons that
attaching Rourman’s “discs” to Morgan’s hydrofoils would have “create[d]
lift forward and aft and reduce friction in water as desired” and would have
been “considered a matter of design preference to suit aesthetics and lift
performance.” Final Act. 8. In the Answer, the Examiner further explains
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that “Rourman is relied upon for disclosing and teaching the use of a disc
shaped fin/foil as a lift component for a surfboard.” Ans. 4.
In contesting the rejection, Appellant argues, inter alia, that the “‘fin’
disclosed in Rourman is designed to (1) manufacture propulsion and (2) to
stabilize a marine vessel.” Appeal Br. 16 (citing Rourman, Abstr.).
Appellant explains that “[p]lacing a ‘fin’ so shaped to the surfboard of
Morgan would not lift and support at least a portion of a surfboard above a
surface of the water.” Id. Appellant also asserts that “no evidence is of
record showing where Rourman teaches the claimed shape.” Reply Br. 5.
Appellant’s arguments are persuasive.
First, we agree with Appellant’s argument that Rourman’s “discs” do
not satisfy the claimed shape, namely, “a cross section that comprises two
substantially linear edges that meet at substantially right angles” and “a
curvilinear edge that meets each of the two substantially linear edges, the
curvilinear edge substantially lacking any linear portion.” Claims App. 1.
To illustrate, we reproduce Rourman’s Figure 3, below:
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Figure 3 is “a specification drawing of the right piece of the horizontal fin.”
Rourman ¶ 63. As shown in the above figure, Rourman appears to have a
“curvilinear” edge which appears semicircular with a radius of about 3
inches. Before the “curvilinear” edge “meets” the “substantially linear edge
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that meet at substantially right angles,” however, there is what appears to be
another intervening linear edge that extends about .75 inches. This .75 inch
linear edge is connected between the “curvilinear edge” and the noted “two
substantially linear edges.” As such, the embodiment shown in Rourman’s
Figure 3 does not have a “curvilinear edge that meets each of the two
substantially linear edges” where the “substantially linear edges . . . meet at
substantially right angles,” as recited in claim 1. See Claims App. 1.
Second, we agree with Appellant that Rourman’s “discs” do not
provide lift, contrary to the Examiner’s assertion. See Appeal Br. 16
(arguing that Rourman’s disc is designed to “manufacture propulsion” and
“stabilize a marine vessel,” not to “lift and support at least a portion of a
surfboard”); see also Ans. 4 (“Rourman is relied upon for disclosing and
teaching the use of a disc shaped fin/foil as a lift component for a
surfboard.”). Other than a reference to “see figures,” the Examiner provides
no explicit citations to Rourman to support a finding that Rourman’s “discs”
provide hydrodynamic lift. See Final Act. 7–8; see also Ans. 4–6. Rather,
Rourman discloses that the purpose of its “disc” is to “stabilize the
surfboard” and to resist listing by “the upward lift counter pressure and
downward push counter pressure combined resistance.” See, e.g., Rourman
¶¶ 40, 108. Accordingly, we are not persuaded that a skilled would have
modified Morgan by adding “discs” like Rourman’s “in order to create lift
forward and aft and reduce friction in water,” as reasoned by the Examiner.
Final Act. 8.
For the foregoing reasons, we reverse the rejection of claims 1–11 as
unpatentable over Morgan and Rourman.

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4. Objections to the Drawings, the Specification, and the Claims
The Examiner objects to the drawings under 37 C.F.R. § 1.83(a).
Final Act. 3. In objecting to the drawings, the Examiner finds that the
claimed disc cross sections are not shown in Fig. 2C, but “are instead shown
in figures 3A, 3B, 6A, 6B, 9A and 9B which seems to agree with applicant’s
disclosure in the specification.” Id.
The Examiner also objects to the Specification for using inconsistent
nomenclature in the claims in accordance with MPEP § 608.01(o). See id. at
4 (“Applicant is reminded that MPEP § 608.01(o) requires consistent
nomenclature in the claims and specification” (emphasis omitted)). The
Examiner finds, inter alia, that the claimed limitations “substantially
conforms in shape to an edge of the first surfboard when installed on the
surfboard” and “wherein each of the plurality of discs has a substantially
circular cross section” are “inconsistent with the terminology used in the
specification.” Id.
In addition to objecting to the drawings and the Specification, the
Examiner also objects to the claims for reciting a “‘system’ or a ‘method’
without specifying a purpose or an intended use.” Id. at 6 (citing MPEP
§ 608.01(o)).
An appeal to the Board under 35 U.S.C. § 134(a) is generally limited
to the review of the merits of rejections of claims and those matters which
directly relate to rejections of claims, i.e., are determinative of a
rejection. 35 U.S.C. §§ 6(b), 134(a); In re Berger, 279 F.3d 975, 984–85
(Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971)); see also MPEP § 1201. As stated in Hengehold:
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There are a host of various kinds of decisions an examiner makes
in the examination proceeding–mostly matters of a discretionary,
procedural or nonsubstantive nature–which have not been and
are not now appealable to the board or to this court when they
are not directly connected with the merits of issues involving
rejections of claims, but traditionally have been settled by
petition to the [Director].
Hengehold, 440 F.2d at 1403.
Unlike the new matter objection discussed above (supra § 2), these
additional objections do not relate to the prior art or written description
rejections now before us. Therefore, the Examiner’s objections to the
drawings, the Specification, and the claims are petitionable matters which
we do not reach in our Decision.

CONCLUSION
We reverse all of the rejections and the new matter objection to the
amendment filed on May 29, 2019.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–11 112(a) Written Description 1–11
1–11 103 Morgan, Rourman 1–11
Overall
Outcome
1–11

REVERSED