Ex Parte Ekhoff

Patent Trial and Appeal Board

Jul 28, 2017

13489747 (P.T.A.B. Jul. 28, 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.
SEA1002CIP1 8611
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
13/489,747 06/06/2012
59911 7590 07/28/2017
MITCH HARRIS, LLC - GENERAL
P.O. BOX 1269
ATHENS, GA 30603-1269
Donald L. Ekhoff
07/28/2017 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 DONALD L. EKHOFF
Appeal 2017-000748
Application 13/489,747
Technology Center 3600
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 24—37, 40, and 41.2 App. Br. 7.3 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellant identifies the real party in interest as Donald L. Ekhoff.
App. Br. 4.
2 Claims 3—23 have been canceled. Claims 38 and 39 are objected to for
being dependent from a rejected base claim, but indicated as containing
allowable subject matter. Non-Final 5.
3 Throughout this opinion, we refer to (1) the Non-Final Rejection (“Non-
Final”) mailed August 4, 2015, (2) the Appeal Brief (“App. Br.”) filed April
Appeal 2017-000748
Application 13/489,747
THE INVENTION
Appellant’s invention relates to “a tangential rotary drive system for
marine propulsion.” Spec. 12. The propulsion system produces forward
thrust using concave scoops to direct water rearward. Id. 17. Each scoop is
shaped to direct water from its bottom edge toward its centerline. Id. 1101.
This action narrows the water flow toward a top point on the scoop, which
increases the water-flow velocity. Id.
THE REJECTION
The Examiner relies on the following as evidence:
Quady US 3,759,213 Sept. 18, 1973
Claims 1, 2, 24—37, 40, and 41 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Quady. Non-Final 3^4.
ANALYSIS
The disputed limitation of claim 1 recites, in part:
wherein the scoops are shaped such that the directing
concentrates water entering the given scoop from a bottom edge
and lower sides of the given scoop along flow lines that flow
upward and inward toward a top point of the centerline of the
given scoop within the water exit region of the given scoop to
form an accelerated jet of water.
Claim 24 recites a similar limitation.
The Examiner finds that Quady discloses all limitations of claims 1
and 24 except for (1) the recited exit velocity and (2) the above-quoted
4, 2016, (3) the Examiner’s Answer (“Ans.”) mailed August 8, 2016, and (4)
the Reply Brief (“Reply Br.”) filed October 10, 2016.
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Appeal 2017-000748
Application 13/489,747
functional limitation to the scoop’s shape. Non-Final 3. Regarding the
second limitation missing from Quady, the Examiner finds that this feature
would have been an “obvious matter of design choice and optimization.”
Id. at 4.
Appellant argues that Quady’s system only directs water upward from
the bottom to the top of the scoop—not inward from the scoop’s lower sides
toward its centerline, as recited. App. Br. 10 (citing Quady Fig. 10). We
agree because Quady’s blades have a right circular cylindrical curvature.
Quady col. 2 11. 52—53. This blade shape directs the water only upward from
the bottom, as shown in Figure 10 below.
Quady’s Figure 10 shows a perspective view of successive stages of the
severance and discharge of a “water chip.”
The Examiner has not identified any embodiment in Quady that
teaches directing water inward from the scoop’s lower sides toward its
centerline. The Examiner’s reliance on routine optimization and design
choice to remedy Quady’s deficiency (Non-Final 3) is in error. To be sure,
Quady explains that further development is needed to obtain “an optimum
size or shape for the blades.” Quady col. 2 11. 51—56, cited in Ans. 5. But
apart from citing Appellant’s own disclosure (Non-Final 3 (citing
Spec. 1 81)), the Examiner has not explained or provided sufficient evidence
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Appeal 2017-000748
Application 13/489,747
to show how one of ordinary skill in the art would modify the prior art to
arrive at the claimed shape. Nor has the Examiner explained or provided
sufficient evidence that Quady teaches or suggests optimizations that would
have led to a shape capable of performing the function recited in claims 1
and 24. Rather, the cited portion of Quady explains that the tests and
calculations are “not conclusive.” Quady col. 2 11. 51—56. The Examiner’s
findings regarding the outcome of this testing are speculative. Non-Final 3;
Ans. 5. On this record, we are persuaded by Appellant’s argument that the
Examiner’s obviousness conclusion is based on impermissible hindsight
instead of the prior art’s teachings. See App. Br. 8—10.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 24, as well as dependent claims 2, 25—37, 40, and
41 for similar reasons.
DECISION
We reverse the Examiner’s rejection of claims 1, 2, 24—37, 40, and 41.
REVERSED
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