Ex Parte Friedrich

Board of Patent Appeals and Interferences

Nov 16, 2010

11726566 (B.P.A.I. Nov. 16, 2010)

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.
11/726,566 03/21/2007 James Friedrich 977.02 8801
85444 7590 11/16/2010
Bay Area Technolgy Law Group PC
500 Sansome Street, Suite 404
San Francisco, CA 94111
EXAMINER
SWINEHART, EDWIN L
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
11/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES FRIEDRICH
____________

Appeal 2009-008604
Application 11/726,566
Technology Center 3600
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008604
Application 11/726,566

2
STATEMENT OF THE CASE
James Friedrich (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting under § 103(a) claims 2, 3, 6, 8-10,
and 12 as unpatentable over Robinson (US 4,129,912, iss. Dec. 19, 1978),
Nayes (US 5,080,621, iss. Jan. 14, 1992), and Beymer (US 3,479,674, iss.
Nov. 25, 1969), and claim 7 as unpatentable over Robinson, Nayes, Beymer,
and Lorenzo (US 6,461,210 B2, iss. Oct. 8, 2002). We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).
Claim 12 (emphasis added) is representative of the claimed invention:
12. A surf ski system to enable a user to surf waves, said system
comprising a pair of surf skis, each surf ski comprising a floatation
device comprising a floating hull, comprising fore and aft ends, a
longitudinal axis connecting said fore and aft ends and a transverse
axis perpendicular to said longitudinal axis, a pair of flexible
connecting straps connecting said pair of surf skis, each surf ski
having a foot well and toe strap for receiving and partially restraining
the feet of a user, one of said flexible connecting straps being fore of
said foot wells and one of said flexible connecting straps being aft of
said foot wells, each of said floatation devices having an upper
surface, a lower surface and side walls for facilitating a user's ability
to plane on water, said lower surface being concave along said
transverse axis, said sidewalls being tapered inwardly from said
upper surface to said lower surface creating a hard chine with said
lower surface and a skeg extending from each lower surface, said side
walls and lower surface meeting at an edge forming said hard chine
there between.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

Appeal 2009-008604
Application 11/726,566

3
OPINION
Issues
The Examiner rejected claim 12, in relevant part, by finding that
Robinson describes skis having a concave bottom and hard chines. Ans. 3.
In particular, the Examiner found that the point at which the sidewalls meet
the rails (skids 32) form "an abrupt sharp change between a side and bottom
of a hull" and that the concave bottom is defined by the rails 32 and bottom
(surface 28). Ans. 5. The Examiner also found, for claim 10, which
depends from claim 12, that the angle between the top surface and the side
walls in Robertson are "somewhat less than 90°." Ans. 4.
Appellant argues that Robinson's bottom surface is not concave, but
linear, bounded by rails (skids) 32, and further, that Robinson does not
describe hard chines, but rails (skids) 32. Appeal Br. 5. Appellant also
argues that Robinson does not meet the requirement in claim 10 that the top
surface of the ski joins each side wall at an angle of approximately 70
degrees. Id.
The first issue raised in this appeal is whether Robinson describes a
ski having a concave bottom with hard chines, as recited in claim 12.
The second issue raised in this appeal is whether Robinson describes
that the top surface of the ski joins each side wall at an angle of
approximately 70 degrees.
Appeal 2009-008604
Application 11/726,566

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Issue 1 – Claim 12
Appellant argues that a comparison between figure 5 of the present
invention and figure 5 of Robinson illustrates the distinction between
Robinson and the present application. Appeal Br. 5. Any differences
between the "present application" and the prior art must be in the claims,
however, not the drawings. The Specification does not provide a special
definition of "concave." The lower surface of Robinson's ski (defined by
skids 32 and bottom 28, in fig. 5) satisfies Appellant's definition of concave:
"hollow or rounded inward like the inside of a bowl." See Appeal Br. 5
(emphasis added). That the definition of "concave" includes things that are
rounded or hollow indicates that not all things that are concave are rounded.
We find that the lower surface of the ski depicted in Robinson forms a
hollow surface, and thus, is concave. See Robinson, fig. 5 (noting the lower
surface, defined by the bottom and inner faces of skids 32 and bottom 28,
form a hollow surface).
According to Appellant's Specification, "[a] chine is the intersection
between the sides and the bottom of a hull." Spec. 7:17-18. The edge at
which the side wall 18 and skid 32 in Robinson meet is the intersection
between the sides and bottom of the hull of the ski. Thus, according to the
Specification, the Examiner's "point" is a chine. See Ans. 5 ("[t]he point at
which the sidewalls meet the bottom defines a hard chine"). Further,
according to Appellant's Specification, "a hard chine is [a chine] that comes
substantially to a point." Spec. 7:18. The Specification does not provide
any further definition of "point." The Examiner found that the intersection
between the sides and bottom in Robinson is a point. Ans. 5. The
intersection in figure 5 of Robinson referenced by the Examiner does appear
Appeal 2009-008604
Application 11/726,566

5
to be a point. We find that the Examiner's "intersection" is formed by a
noticeable edge in the hull, formed due to a large change in angle between
the side wall and the bottom surface of the hull. Accordingly, we are not
persuaded that the Examiner erred in finding that Robinson describes a hard
chine.
Robinson describes a ski with a concave lower surface and hard chine
as required by claim 12. As such, we are not persuaded of error in the
Examiner's rejection of claim 12. Appellant argues claims 2, 3, 6, 8, 9, and
12 as a group. Thus, claims 2, 3, and 6, 8, and 9 fall with claim 12.
Appellant does not present any separate argument contesting the
rejection of claim 7 as being unpatentable over Robinson, Nayes, Beymer,
and Lorenzo. Thus, Appellant also fails to persuade us of error in the
rejection of claim 7.
Issue 2 – Claim 10
Appellant argues that the top surface of the ski in Robinson does not
join each side wall at an angle of approximately 70 degrees. Appeal Br. 5.
The Examiner found that the angle between the top surface and the side wall
of the ski in Robinson describes an angle "somewhat less than 90," and that
"approximately 70" degrees "fails to define over the angle shown by
Robinson." Ans. 4. However, the Examiner has not explained why
"somewhat less than 90" degrees satisfies a limitation requiring an angle of
"approximately 70" degrees, nor has the Examiner indicated which angle in
Robinson is "somewhat less than 90" degrees. Thus, it is not clear what the
basis is for the Examiner's conclusion that the subject matter of claim 10 is
obvious in view of Robinson, Nayes, and Beymer. The examiner has the
initial duty of supplying the requisite factual basis and may not, because of
Appeal 2009-008604
Application 11/726,566

6
doubts that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967). Accordingly,
we do not sustain the Examiner's rejection of claim 10.

DECISION
We affirm the Examiner's rejections of claims 2, 3, 6-9, and 12. We
reverse the Examiner's rejection of claim 10.
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) (2007).

AFFIRMED-IN-PART

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