Ex Parte Bernloehr et al

Patent Trial and Appeal Board

Aug 1, 2016

13721420 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131721,420 12/20/2012
53609 7590 08/03/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Darrel A. Bernloehr
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.
507775-CON 5548
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREL A. BERNLOEHR, GREGORY PAUL BEAMER, and
DAVID M. SAMEK
Appeal2014-007145
Application 13/721,420
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darrel A. Bemloehr et al. (Appellants) 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1, 3-15, 17, 18, and 20.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Johnson Outdoors Inc.
App. Br. 2.
2 Claims 2, 16, and 19 are canceled. Id.
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Application 13/721,420
SUMMARY OF INVENTION
Appellants' invention is directed to a shallow water anchor that
"anchors a watercraft within the water such that the watercraft does not drift
due to current" and that "function[ s] without producing an excessive amount
of noise or obscuring the clarity of the water." Spec. i-f 5. Independent
claims 1 and 1 7, reproduced below from the Claims Appendix of the Appeal
Brief, are representative of the claimed subject matter:
1. An anchoring system for a watercraft, comprising:
a first anchor having a first electronic receiver; and
a remote control including a transmitter arrangement
operable to send at least one electronic control signal directly to
the first electronic receiver of the first anchor and to a second
electronic receiver of a second anchor, such that the remote
control can directly control the first anchor and the second
anchor simultaneously via the depression of a single button of
the remote control to anchor the watercraft simultaneously at
two distinct anchoring points.
17. An anchor for a watercraft, comprising:
a base section;
at least one anchor extension carried by the base section,
the at least one anchor extension deployable and retractable
relative to the base section; and
a visual indicator, the visual indicator operable to display
a visual indication corresponding to a length of extension of the
at least one anchor extension greater than a fully retracted
position of the at least one anchor extension relative to the base
section.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
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Application 13/721,420
Crenshaw
Griesau
Brianza
Rothe
Cullom
us 4,254, 730 Mar. 10, 1981
US 2004/0075602 Al Apr. 22, 2004
US 7,104,212 B2
US 7 ,34 7 ,863 B2
US 7,921,794 Bl
REJECTIONS3
Sept. 12, 2006
Mar. 25, 2008
Apr. 12, 2011
Claims 17 and 184 are provisionally rejected on the ground of
nonstatutory double patenting over claims 13-165 of copending US
Application No. 12/714,588 ("the '588 application").
Claims 17 and 18 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Crenshaw.
Claims 1, 3-15, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cullom; Crenshaw; Brianza; and Griesau.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cullom, Crenshaw, Brianza, Griesau, and Rothe.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Crenshaw.
3 Two additional double patenting rejections, based on US Application Nos.
13/292,147 and 12/714,572, are withdrawn. Ans. 3.
4 The rejection of claims 1, 3-15, and 20 based on the '588 application are
withdrawn. Id.
5 Although claims 1-22 of the '588 application are listed in the heading of
the rejection (see Final Act. 3), the Examiner clarifies that claims 13-16 are
relied on in the rejection (see Ans. 4).
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ANALYSIS
Claim Construction
Claim 17 recites, inter alia, "the visual indicator operable to display a
visual indication corresponding to a length of extension of the at least one
anchor extension greater than a fully retracted position of the at least one
anchor extension relative to the base section." App. Br., Claims Appendix 4.
The Examiner contends that this claim language only requires the indication
that the anchor extension is in a position other than fully retracted. See, e.g.,
Final Act. 4. Appellants disagree, arguing that this language requires an
indication of the specific length of the extension. See, e.g., App. Br. 5.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Any special meaning assigned to a
term "must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel
meaning to a claim term, the words take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted). Also, while we interpret claims broadly but reasonably in
light of the Specification, we nonetheless must not import limitations from
the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1316, 1323 (Fed. Cir. 2005) (en bane) (citations omitted).
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Application 13/721,420
Here, although Appellants' Specification indicates that the visual
indicator may "display a visual indication corresponding to an amount of
deployment of the at least one anchor extension relative to the base section"
(Spec. i-f 3 2 (emphasis added)) and may include a plurality of LED lights
wherein "[ e Jach LED light corresponds to approximately one foot of
extension of the first and second anchor extensions" (id. i-f 100 (emphasis
added)), claim 17 is not limited to require such a level of specificity.
Instead, claim 1 7 only requires a visual indication corresponding to an
anchor extension length "greater that a fully retracted position." We agree
with the Examiner's determination that a visual indication "that at least one
anchor extension is not fully retracted (which corresponds to a length of
extension that is between fully extended and not fully retracted)" satisfies
claim 17. Ans. 5. Thus, we construe claim 17 to require a visual indicator
operable to display that the anchor extension is in an extended position
relative to the base section such that it is not fully retracted, but not to
require an indication of the specific distance that the anchor extension has
been extended away from the base section.
Double Patenting Rejection
The Examiner rejects claims 17 and 18 on the ground of nonstatutory
double patenting as being "fully encompassed by or ... an obvious variant
of' claims 13-16 of the '588 application. 6 Final Act. 3. The Examiner
elaborates that "any extended length of at least one anchor extension relative
6 We note that the '588 application issued as US 8,776,712 subsequent to the
filing date of the Appeal Brief in this appeal.
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Application 13/721,420
to the base section would have a length greater than that for a fully retracted
position," and that "claims 13-16 of the [' 588] application fully encompass
the subject matter of claims 17 and 18 of the instant application." Ans. 4--5.
Thus, we treat the Examiner's rejection as an anticipation-type rejection.
Appellants disagree with the Examiner's findings, arguing that "while
several of the claims of the '588 application reference a visual indicator,
none of them reference a visual indicator that is operable to display a visual
indication corresponding to a length of extension of at least one anchor
extension greater than a fully retracted position." App. Br. 10. Appellants
elaborate that "while claims 15 and 16 of the '588 application reference a
visual indicator, none of them reference a visual indicator that is operable to
display a visual indication corresponding to a length of extension of at least
one anchor extension greater than a fully retracted position." Reply Br. 13.
An anticipation-type nonstatutory double patenting rejection is
appropriate where a claim in an application under examination claims
subject matter that is different, but not patentably distinct, from the subject
matter claimed in a prior patent. The claim under examination is not
patentably distinct from the reference claim( s) if the claim under
examination is anticipated by the reference claim( s ). See MPEP
§ 804 II(B)(l) (citing In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re
Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993)).
Claim 15 of the '588 application includes all recitations of instant
claim 1, other than the length of extension being "greater than a fully
retracted position of the at least one anchor extension." See '588
Application, January 18, 2013 Amendment, 3. We agree with the
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Examiner's determination that "any extended length of at least one anchor
extension relative to the base section would have a length greater than that
for a fully retracted position." See Ans. 4--5. Appellants' arguments do not
apprise us of error in the Examiner's findings or reasoning, and are thus
unpersuasive.
Accordingly, we affirm the rejection of claim 17 on the ground of
nonstatutory double patenting as being unpatentable over claims 13-16 of
the '588 application. Appellants do not make any other substantive
argument regarding the rejection of claim 18, which depends directly from
claim 17. See App. Br. 10. Therefore, we likewise sustain the rejection of
claim 18.
Anticipation Rejection Based on Crenshaw
The Examiner finds that Crenshaw discloses all of the elements of
independent claim 17. Final Act. 4. ~v1ore specifically, the Examiner finds
that Crenshaw discloses, inter alia, "a visual indicator (control indicator)
[ 44] operable to display a visual indication corresponding to a length of
extension of the at least one anchor extension greater than a fully retracted
position of the at least one anchor extension relative to the base section." Id.
(brackets in original).
Appellants disagree, arguing that "[ t ]he on or off condition of
[Crenshaw's] illuminating sensor 44 provides no specific correspondence to
any length of extension." App. Br. 5. Continuing, Appellants argue that
"there would be no way to discern the specific length of extension of the
Crenshaw system based on illuminating sensor 44 in either of its on or off
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conditions" and "[t]here is no correlation to a length of extension that may
be ascertained from" Crenshaw's control indicator 44. Id.
As discussed above, we construe claim 1 7 not to require an indication
of the specific distance that the anchor extension has been extended away
from the base section. We, therefore, find Appellants' arguments
unpersuasive, as limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we affirm the rejection of claim 17 as being anticipated
by Crenshaw. Appellants do not make any other substantive argument
regarding the rejection of claim 18, which depends directly from claim 17.
See App. Br. 4--5. Therefore, we likewise sustain the rejection of claim 18.
Obviousness Rejection Based on Cullom, Crenshaw, Brianza, and Griesau
The Examiner finds that Cullom discloses the invention substantially
as defined in independent claim 1, but "does not disclose a second receiver
and second anchor nor the first remote control transmitter functionality and
arrangement that [sic] configured as claimed by applicant." Final Act. 5.
However, the Examiner finds that:
Providing an additional anchor with a boat, with one anchor on
each side of the boat, would have been an obvious improvement
to one of ordinary skill in the art in order to facilitate better
anchoring capacity for a watercraft, especially in view of the
disclosure of Crenshaw which has multiple anchors with a
control for the multiple anchors for a boat.
Id. The Examiner further relies on Crenshaw to teach remote control of
anchors and Brianza to teach wireless remote control of watercraft
components, concluding that it would have been obvious to a skilled artisan:
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Application 13/721,420
to provide a remote control similar to Brianza that would be
capable of operating a first and second anchor similar to the one
disclosed by Cullom et al., especially in view of multiple
anchors and control functionality disclosed by Crenshaw, that
would provide the functionality and operability recited by
applicant to control two or more anchors on a boat as claimed.
Id. at 5---6. The Examiner further finds that Griesau teaches a programmable
remote control capable of operating a plurality of devices simultaneously via
a single button, and concludes that it would have been obvious to a skilled
artisan "to provide such functionality in a remote control as a matter of
convenience to an operator to facilitate and simplify operation of the device
for the operation of multiple anchors." Id. at 6. Finally, the Examiner
asserts that:
Id.
The functional limitations for the recited button(s), including
button depression and release operation, and same signal
transmission for similar anchors of [sic] multiple anchors for
the remote control, operation and transmitter arrangement
would be considered a matter of electronic programming and
design preference obvious to one of ordinary skill in the art to
facilitate control of the anchor device in view of the above
disclosures ....
Appellants argue that "Griesau is clear that while its remote is capable
of controlling a plurality of different types of devices at once, it never makes
reference that it can control two of the same type of a device at any time."
App. Br. 6. Continuing, Appellants argue that Griesau "specifically
excludes the control of two television sets, etc. by stating that its control
corresponds 'to a different one of the plurality of devices.'" Id. at 6-7.
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The Examiner explains that Griesau "is not relied upon to demonstrate
control of a plurality of the same type of device. The remote control of
Brianza is relied upon for such purpose." Ans. 6. Thus, Appellants'
arguments fail to apprise us of any error in the rejections, and are therefore
unpersuasive.
We note that Appellants present additional arguments in the Reply
Brief. See Reply Br. 7-10. We need not consider these new arguments,
which are deemed waived, and we decline to do so here. See 3 7 C.F .R.
§ 41.4l(b )(2). The new arguments, which relate to whether the teachings of
Brianza can render obvious the simultaneous control of two anchors and
whether the recitations of claims 17 and 18 were discussed in the Final
Office Action, could have been presented earlier in the principal Appeal
Brief to address the outstanding rejection of record, but were not. Here, the
absence of any opportunity for the Examiner to respond to these untimely
arguments precludes meaningful appellate review.
Accordingly, we affirm the rejection of claims 1, 3-15, 17, and 18 as
being unpatentable over Cullom, Crenshaw, Brianza, and Griesau.
Obviousness Rejection Based on Cullom, Crenshaw,
Brianza, Griesau, and Rothe
Claim 20 depends directly from claim 17, and further requires that
"the at least one LED light comprises a linear row of LED lights." App. Br.,
Claims Appendix 4. The Examiner finds the combination of Cullom,
Crenshaw, Brianza, and Griesau discloses the invention substantially as
claimed "with the exception of the recited visual indicator being an LED
light or linear row of lights." Final Act. 7. The Examiner relies on Rothe to
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teach "a linear array of indicators mounted on a base or housing for
providing indication of a deployment of a sliding device within the base or
housing," finds that "LED lights are known," and concludes that it would
have been obvious to a skilled artisan "to provide an LED light or linear row
of LED lights on the base section of the above device that would reliably
provide a visual indication corresponding to a length of at least one anchor
extension relative to the base section to facilitate deployment and retraction
of the anchor." Id. (citing Rothe, 6:31-35).
Appellants argue, inter alia, that "[ t ]he fact that a LED light may be
known does not supplant the need to provide an evidentiary-based showing
that it would be obvious to combine a linear row of LED lights with the
combined teachings of Cullom in view of Crenshaw, Brianza, Griesau and
Rothe." App. Br. 8.
We are persuaded by Appellants' arguments. The Examiner has not
persuasively explained or identified adequate teachings within the identified
prior art references to support, by a preponderance of evidence, the
determination that it would have been obvious to place a visual indicator,
such as the indicator window and lines of Rothe, in the anchoring system of
the Cullom, Crenshaw, Brianza, and Griesau combination. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (setting forth that an
Examiner's burden of proving non-patentability is by a preponderance of the
evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(setting forth that the Patent Office may not "resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis" in making a rejection under 35 U.S.C. § 103). Here, it
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Application 13/721,420
appears that the Examiner's rationale for providing a visual indicator-"to
facilitate deployment and retraction of the anchor" (Final Act. 7}-may have
been gleaned from Appellants' Specification; we note that the Examiner did
not cite any evidence as providing such rationale.
Accordingly, we reverse the rejection of claim 20 as being
unpatentable over Cullom, Crenshaw, Brianza, Griesau, and Rothe.
Obviousness Rejection Based on Crenshaw
The Examiner rejects claim 20 as being unpatentable over Crenshaw.
Final Act. 7-8. Appellants have not addressed this rejection. See App. Br.
1-11. Accordingly, Appellants have waived any argument of error, and we
summarily sustain the rejection of claim 20 as being unpatentable over
Crenshaw. See Jlyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
We note that Appellants present arguments in the Reply Brief, seeking
reversal of this rejection "in view of the Examiner's indication of allowable
subject matter." Reply Br. 13. We decline to do so. The claim was rejected
in the Final Office Action (see Final Act. 7-8), and the rejection was
maintained in the Examiner's Answer (see Ans. 3) following the March 20,
2014 Interview during which a potential allowance of the application was
discussed. Moreover, as Appellants made these arguments in the Reply
Brief, having failed to address this rejection in the Appeal Brief, such
arguments are untimely and are deemed waived. See 37 C.F.R.
§ 41.4l(b )(2).
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DECISION
The Examiner's decision to reject claims 17 and 18 on the ground of
nonstatutory double patenting over claims 13-16 of the '588 application is
affirmed.
The Examiner's decision to reject claims 17 and 18 as being
anticipated by Crenshaw is affirmed.
The Examiner's decision to reject claims 1, 3-15, 17, and 18 as being
unpatentable over Cullom, Crenshaw, Brianza, and Griesau is affirmed.
The Examiner's decision to reject claim 20 as being unpatentable over
Cullom, Crenshaw, Brianza, Griesau, and Rothe is reversed.
The Examiner's decision to reject claim 20 as being unpatentable over
Crenshaw is affirmed. 7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7 Claim 20 includes the recitation "the at least one LED light." App. Br.
Claims Appendix, 4. There is insufficient antecedent basis for this
limitation. In the event of further prosecution of the subject matter of claim
20, Appellants and the Examiner may wish to consider taking appropriate
action to address this informality.
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