12125125 - (D) (P.T.A.B. Sep. 25, 2013)

Ex Parte Butters

Patent Trials and Appeals BoardSep 25, 2013

12125125 - (D) (P.T.A.B. Sep. 25, 2013)

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. 12/125,125 05/22/2008 Robert C. Butters BBR100A US 3976 21133 7590 09/26/2013 VAN OPHEM & VANOPHEM, PC REMY J VANOPHEM, PC 51543 VAN DYKE SHELBY TOWNSHIP, MI 48316-4447 EXAMINER OLSON, LARS A ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 09/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT C. BUTTERS ____________ Appeal 2011-011843 Application 12/125,125 Technology Center 3600 ____________ Before WILLIAM V. SAINDON, NEIL T. POWELL, and JILL D. HILL Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011843 Application 12/125,125 2 STATEMENT OF THE CASE Robert C. Butters (Appellant) appeals under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4, 6-8, 11, 13-15, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a trim member having a configuration that operates to control the fluid flow path and direct fluid water away from the hull of the watercraft.” See Spec., para. [0004]. Claim 1 illustrates the subject matter on appeal and is reproduced below. 1. An apparatus for use with a watercraft comprising: a trim member, said trim member having a rear surface and a front surface; said trim member including an upper surface and a lower surface, said upper surface extending between and connecting said front and rear surfaces, said upper surface tapering downwards toward said lower surface, as it extends from said rear surface to said front surface; a collecting surface disposed between said front surface and said lower surface, said collecting surface extending outwardly from said lower surface, at least a portion of said collecting surface spaced horizontally below said lower surface to define a fluid discharge area; and said upper surface, front surface and collection surface cooperating to form an uninterrupted fluid path wherein fluid flowing along said upper surface flows on said front surface to said collection surface and falls off said Appeal 2011-011843 Application 12/125,125 3 trim member at said discharge area such that said collection surface causes fluid flowing downward along the upper surfaces of said watercraft to fall off said trim member such that said fluid does not come in contact with the lower surfaces of said watercraft below said trim member to prevent unsightly streaking water stains. EVIDENCE The Examiner relies on the following evidence: Boyer US 4,084,533 Apr. 18, 1978 Abe US 6,776,114 B2 Aug. 17, 2004 REJECTION Claims 1, 2, 4, 6-8, 11, 13-15, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Boyer and Abe. Ans. 3. ANALYSIS The Examiner finds that Boyer’s Figure 6 discloses a rub rail trim member 50 including a lower surface 58 configured to form a collection surface having an arcuate cross-section that extends outwardly from the lower surface and includes a discharge area. Ans. 3. The Examiner also finds that Boyer discloses the trim member’s upper surface, front surface 54 and 56, and collection surface cooperating to form an uninterrupted fluid path allowing fluid to flow from the upper surface along the front surface 54 and 56, and to the collection surface that collects fluid flowing over the trim Appeal 2011-011843 Application 12/125,125 4 member and discharges the fluid away from said hull at a discharge area. Ans. 3-4. The Examiner finds that Abe’s Figure 4b discloses a trim member 40 having a lower surface 46 with a bulbous collection surface spaced horizontally below the lower surface and defining a discharge area allowing water to flow away from a hull surface 14, and that Abe teaches adding a bulbous portion to the lower surface of the Figure 4a embodiment, such that its lower surface includes a bulbous collection surface. Ans. 4, 6. The Examiner concludes that it would have been obvious, to one of ordinary skill in the art at the time of the invention, to utilize Abe’s bulbous collection surface on the lower surface of Boyer’s trim member, and that Abe’s discharge area would have the expected result of directing water to flow away from the watercraft hull. Ans. 5, 6. Appellant argues that the water path flow over Boyer’s rub rail cannot be the same as that of Appellant’s invention and therefore cannot obviate Appellant’s invention, and that Boyer does not disclose a rub rail having a collection surface disposed between its front surface and its lower surface, wherein the collecting surface extends outwardly from the lower surface and a portion of the collecting surface is spaced horizontally below the lower surface to define a discharge area, such that Boyer fails to recognize the problem of water draining over the rub rail and down the side of the hull and fails to teach the claimed discharge area. App. Br. 11-12. Appellant goes on to argue that neither Boyer nor Abe, nor the combination thereof, teaches a rub rail causing fluid draining from the watercraft to flow down the upper portion of the watercraft, dripping off at the rub rail instead of flowing down the bottom side of the watercraft. App. Br. 19-20. Appeal 2011-011843 Application 12/125,125 5 The Examiner, however, finds only that Boyer discloses a lower surface 58 configured to form a collection surface having an arcuate cross- section that extends outwardly from the lower surface and includes a discharge area. It is Abe that is found to teach the collecting surface extending outwardly from the lower surface and spaced horizontally below the lower surface to define a discharge area. The language in claim 1 regarding fluid flow over the trim member is a functional recitation. Functional recitations limit the structure defined by an apparatus claim, insofar as the structure must be capable of performing the recited function in order to satisfy the functional limitation. However, where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Examiner found that at least Abe’s discharge area would have the expected result of allowing water to flow away from the watercraft hull as claimed. Ans. 6. Thus, the Examiner found that the combination of Boyer and Abe would have been capable of creating the claimed fluid flow path over the trim member. Appellant has not provided any arguments convincing us that the claimed function patentably distinguishes the claimed structure from the prior art structure. Appellant also argues that “[t]he solutions taught by each of the references are directed to problems completely different than that described in Appellant's invention” because Boyer and Abe are directed to problems associated with rub rails being difficult to assemble, not with Appellant’s stated problem of hull staining. App. Br. 14-15. Appellant then argues that Appeal 2011-011843 Application 12/125,125 6 one skilled in the art would have no basis for combining the teachings of Boyer and Abe, because neither reference is directed to Appellant’s stated problem of avoiding unsightly streaks and/or stains on a watercraft hull. App. Br. 16. These arguments rest on the incorrect assumption that a person of ordinary skill in the art would look only to prior art directed to the same problem. The fact that Boyer and Abe do not address the specific problem Appellant endeavored to solve does not negate the fact that Boyer and Abe disclose watercraft rub rails that include every element of the claimed invention. To the extent that Appellant is alleging patentability based on discovery of the source of a problem (i.e., runoff fluid staining watercraft hulls), appellants alleging that they discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and persuasive assertion in the specification. In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979). Appellant has not provided such evidence and we are therefore not persuaded by these arguments. Appellant further argues that combining the teachings of Boyer and Abe would result in a rub rail that provides a protector strip mountable by a limited number of steps to minimize outlay of time and material expense. App. Br. 15. This argument erroneously looks to the problems solved by Boyer and Abe rather than the structure of Boyer and Abe, and is therefore not persuasive. That the combination of Boyer and Abe’s disclosures might address some problems different than that the Appellant endeavored to solve does not negate that Examiner’s determination that the combination would meet the limitations of Appellant’s claims. Appeal 2011-011843 Application 12/125,125 7 Appellant questions whether it would be technically feasible to combine the teachings of Boyer and Abe, because the resulting structure might be incompatible with itself in terms of the objectives of each reference. App. Br. 15-16. The test for obviousness, however, “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant merely questions the feasibility of combining Boyer and Abe, and does not explain why it would not be technically feasible to combine their teachings or what the combined teachings of the references would have suggested to those of ordinary skill in the art. We therefore are not persuaded by this argument. Appellant argues that Abe does not disclose where the rub rail cross section of its Figure 4b is taken and whether the cross section shown in Figure 4b is present throughout the length of the rub rail. App. Br. 16-17. Even if Abe failed to teach that the cross section of Figure 4b extends throughout the entirety of its rub rail, the claims do not recite that the collection surface and discharge area exist at a specific area of the length of the rub rail or over an entire length of the rub rail. This argument is therefore not persuasive. Appellant argues that Abe provides “not a single word of disclosure with respect to the bulbous collection surface pointed to by the Examiner in Figure 4b to propose to a person skilled in the art to combine this feature with the teachings of Boyer.” App. Br. 16-17. Continuing this line of reasoning, Appellant contends, “there is absolutely not a single word of Appeal 2011-011843 Application 12/125,125 8 enablement with respect to this bulbous section as to its purpose.” App. Br. 17. As such, Appellant contends that “the resulting combination does not teach how to make and use the claimed invention . . . in order to solve the problem experienced with the prior art.” App. Br. 18. However, Appellant admits that “a reference need not be enabled to be prior art.” Id. As such, we are not persuaded by Appellant’s line of reasoning at these pages.1 Appellant presents no separate arguments regarding claims 2, 4, 6-8, 11, 13-15, and 17. Claims 2, 4, 6-8, 11, 13-15, and 17 therefore fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We sustain the rejection of claims 1, 2, 4, 6-8, 11, 13-15, and 17 under 35 U.S.C. § 103(a)2. DECISION We AFFIRM the rejection of claims 1, 2, 4, 6-8, 11, 13-15, and 17 under 35 U.S.C. § 103(a). 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 hh 1 We note that Appellant does not argue the Examiner’s reason for combination at these pages but rather argues the enablement of the prior art. We do not address arguments not made. 2 Claim 15 depends from claim 12, which has been canceled. Claim 15 may therefore additionally be indefinite under 35 U.S.C. § 112, second paragraph.