Ex Parte Gibbs

Patent Trial and Appeal Board

Jul 25, 2017

12674892 (P.T.A.B. Jul. 25, 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.
12/674,892 04/15/2011 Alan Timothy Gibbs BWT2 83598 (D128) 1182
24201 7590 07/27/2017
FULWIDER PATTON LLP
HOWARD HUGHES CENTER
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
docketla @ fulpat. com
eOfficeAction @ fulpat. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN TIMOTHY GIBBS
Appeal 2016-004451
Application 12/674,892
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, 10—13, 15—21, 23—27, and 29—32. App. Br. 1.
Claims 9, 14, 22, 28, and 33 have been cancelled. Claims App’x. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004451
Application 12/674,892
STATEMENT OF THE CASE
Appellant’s claimed subject matter is directed to an amphibian with
retractable wheels. Spec. 1. Claim 1, reproduced below, is representative:
1. A planing amphibian for use on land and water comprising:
a hull;
a suspension assembly;
a pair of wheels mounted to the amphibian by the suspension
assembly and connectable to a power source for driving the wheels;
at least one land drive for use of the amphibian on land and at
least one marine drive for use of the amphibian on water, wherein the
at least one land drive is separate to the at least one marine drive; and
a wheel retraction mechanism for moving the wheels between a
deployed wheel position for use of the amphibian on land and a
retracted wheel position for planing of the amphibian on water;
wherein the wheels are retractable to a position above a waterline of
the amphibian for use of the amphibian on water;
wherein the suspension assembly comprises suspension arms on
each side of the pair of wheels so that the pair of wheels lie between
the arms.
REJECTIONS
Claims 1—7, 13, 15—21, 23, 24, 26, and 29—32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Schad (US
5,769,021; issued June 23, 1998) and Bryham (US 7,004,801 B2; issued
Feb. 28, 2006).
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Claims 1—7, 10, 13, 17—21, 23, 24, 26, 31, and 32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Fredelake
(US 3,370,309; issued Feb. 27, 1968) and Bryham.
Claims 8 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schad, Bryham, and Muller (US
2,916,296; issued Dec. 8, 1959).
Claims 8 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fredelake, Bryham, and Muller.
Claims 11, 12, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Schad, Bryham, and Hebert (US
4,872,413 issued Oct. 10, 1989).
ANALYSIS
103 Rejections of Schad and Bryham
Appellant argues Schad does not teach or suggest a “suspension
assembly,” as recited in independent claim 1. App. Br. 7. Rather, Appellant
argues “the Schad patent discloses only a rigid connection of wheels via
yolks, and not any suspension capability.” Id.
We are not persuaded by Appellant’s arguments. Appellant does not
explicitly define a “suspension assembly” in the Specification, nor does
Appellant proffer a definition in the briefs. Appellant’s Specification
describes “[t]he suspension assembly 22 comprises a pair of trailing arms
24, extending rearwardly from the hull 12. The trailing arms are rotatably
connected to a chassis of the vehicle (within and supporting the hull 12) at
pivots 32.” Spec. 2.
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We agree with the Examiner that Schad’s movable yoke teaches or
suggests the claimed suspension assembly. See Final Act. 6; Ans. 5; Schad
col. 3,11. 49-54, Fig. 3.
Appellant further argues Schad does not teach or suggest “a pair of
wheels mounted by the suspension assembly and connectable to a power
source for driving the wheels,” as recited in independent claim 1. App. Br.
7. Rather, Appellant argues “no power sources drives the wheels in the
Schad patent.” Id.
Appellant’s arguments are not persuasive because the Examiner relies
on Bryham, not Schad, to teach or suggest the power source for driving the
wheels. Final Act. 5; Ans. 5—6.
Appellant further argues Schad does not disclose “at least one land
drive . . . separate to the at least one marine drive.” App. Br. 8. Rather,
Appellant argues “the Schad patent is silent as regards this feature.” Id. at 7.
According to Appellant, “the at least one land drive is not separate to the at
least one marine drive in the Schad patent since only a single drive is
disclosed to move the craft in both the land and marine modes.” Id. at 9.
Appellant further argues, in the second embodiment, “only a single marine
drive (the inboard-outboard engine) is being used. There is simply a lack of
any component which constitutes a land drive in the particular embodiment
disclosed in FIGS. 10-11 of the Schad patent.” Id. at 10.
We are not persuaded by Appellant’s arguments. Appellant does not
explicitly define a “marine drive” or a “land drive” in the Specification, nor
does Appellant proffer a definition in the briefs. Appellant’s Specification
states “[t]he amphibian 10 may be powered on water by one or more jet
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Application 12/674,892
drives 40 . . . [t]he jets function as marine drives, which are separate to the
wheels, which function as land drives.” Spec. 3^4.
The Examiner finds, and we agree, Schad teaches or suggests the
disputed limitation in each of two embodiments. Ans. 5. In the first
embodiment, the Examiner finds Schad’s air fan combined with wheels
teaches or suggests the land drive, and Schad’s air fan alone teaches or
suggests the marine drive. Ans. 5; see Schad Fig. 1. In the second
embodiment, the Examiner finds Schad’s wheels teach or suggest the land
drive, and Schad’s outboard motor teaches or suggests the marine drive.
Ans. 5; see Schad col. 4,11. 32-48, Figs. 10, 10A, 11. We are not persuaded
the air fan combined with the wheels is not a separate drive to the air fan by
itself. Moreover, we are not persuaded the second embodiment only
provides a marine drive. Figure 11 clearly depicts wheels, which Appellant
identifies in their Specification as a land drive. See Spec. 4.
Appellant further argues Schad does not disclose “the suspension
assembly comprises suspension arms on each side of the pair of wheels so
that the pair of wheels lies between the suspension arms,” as recited in
independent claim 1. App. Br. 7. Rather, Appellant argues “the craft
disclosed in the Schad patent merely provides a yoke for each wheel.” Id.
We are not persuaded by Appellant’s arguments and agree with the
Examiner that Schad’s left yoke teaches or suggests the first suspension arm
and Schad’s right yoke teaches or suggests the second suspension arm, and
the wheels, therefore, lie between the suspension arms. See Ans. 5; Schad
Fig. 3; see, e.g., Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1376
(Fed. Cir. 2004) (“t]he transitional term ‘comprising,’ ... is synonymous with
“including,' ‘containing,’ or ‘characterized by,’ [and] is open-ended and does
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Application 12/674,892
not exclude additional, unrecited elements or method steps.” (quoting
MPEP, 8th ed., rev. 1 § 2111.03 (2003)).
Appellant further argues the Examiner improperly combined Schad
and Bryham because the “drive system disclosed in the Bryham patent is
completely incompatible with the retraction arrangement in the Schad
patent.” App. Br. 8; see also Reply Br. 3—5. In addition, Appellant argues
“[t]he Schad patent specifically teaches a preference in all of the alternative
power arrangements to not drive the wheels of the water craft.” App. Br. 8.
We are not persuaded by Appellant’s arguments. The Examiner relies
on Bryham to teach or suggest the wheels connectable to a power source for
driving the wheels, and combines Bryham with Schad to “facilitate putting
the boat into the water after being unhitched from a vehicle” and to
“facilitate capability of the vehicle to be driven in land mode with the power
source driving the wheels.” Ans. 6; see also Ans. 10—11.
The Examiner’s rejection is not based upon a bodily incorporation of
the Bryham into Schad, but rather the combined teachings of the references,
ft is well established that the obviousness inquiry does not ask “whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole.”
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has not provided
persuasive evidence or explanation showing the Examiner’s asserted
combination is anything other than a combination of familiar elements
yielding no more than predictable results. See KSR Int 7 Inc. v. Teleflex Inc.,
550 U.S. 398, 416—17 (2007); see Ans. 5—6 (“[t]he rejection combines
known features to achieve expected results”). Nor has Appellant shown that
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combining the prior art was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418—19). We find that the Examiner has
articulated how the claimed features are met by the proposed combination of
the reference teachings with some rational underpinning, consistent with the
guidelines stated in KSR. See Final Act. 5—6; Ans. 5—6, 11.
Moreover, we are not persuaded by Appellant’s teaching away
argument. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738
(Fed. Cir. 2013), cert, denied, 134 S. Ct. 2740 (U.S. 2014) (“A reference
does not teach away,... if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.”)
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 over the combination of Schad and Bryham.
Appellant essentially repeats the same arguments with respect to
independent claim 24. See App. Br. 8. Therefore, for the same reasons, we
are not persuaded the Examiner erred in rejecting independent claim 24, as
well as dependent claims 2—8, 10-13, 15—21, 23, 25—27, and 29—32, which
were not argued separately (see App. Br. 15—16).
103 Rejections of Fredelake and Bryham
Appellant argues Fredelake does not teach or suggest “a planing
amphibian,” as recited in independent claim 1. App. Br. 12. Rather,
Appellant argues “Fredelake discloses a pontoon raft, with no disclosure of
planing.” Id.
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We are not persuaded by Appellant’s arguments. As the Examiner
points out, “planing” is used only in the preamble of the claim. Ans. 7.
“Preamble language that merely states the purpose or intended use of an
invention is generally not treated as limiting the scope of the claim.” Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006). “If the body of
the claim ‘sets out the complete invention,’ the preamble is not ordinarily
treated as limiting the scope of the claim.” Id. “However, the preamble is
regarded as limiting if it recites essential structure that is important to the
invention or necessary to give meaning to the claim.” Id. “For apparatus
claims . . . generally patentability ‘depends on the claimed structure, not on
the use or purpose of that structure.’” Marrin v. Griffin, 599 F.3d 1290,
1294 (Fed. Cir. 2010).
We agree with the Examiner that the claimed “planing amphibian for
use on land and water” recited in the preamble describes an intended use or
capability of the invention. Ans. 7. The limitation does not change the
structure or capability of the subsequently recited components in the body of
the claim. Thus, we do not see, and Appellant has not adequately rebutted,
how the claimed “planing” in the preamble is a necessary component of the
claimed invention and necessary to complete the invention recited in the
claim body. Regardless, however, we agree with the Examiner that
Fredelake is capable of planing. See Ans. 7; Final Act. 8.
Appellant argues Fredelake does not teach or suggest “a pair of
wheels . . . connectable to a power source for driving the wheels,” as recited
in independent claim 1. App. Br. 12. Rather, Appellant argues “no power
source drives the wheels in Fredelake, it is towed via its tow hitch.” Id.
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Appellant’s arguments are not persuasive because the Examiner relies
on Bryham, not Schad, to teach or suggest the power source for driving the
wheels. Final Act. 7; Ans. 7.
Appellant argues Fredelake does not teach or suggest “at least one
land drive . . . separate to the at least one marine drive.” App. Br. 12.
Rather, Appellant argues “Fredelake is silent as regards this feature.” Id.
We are not persuaded by Appellant’s argument. As described supra,
Appellant’s Specification describes wheels as a land drive. We, therefore,
agree with the Examiner that Fredelake’s motor teaches or suggests a marine
drive and Fredelake’s wheels teach or suggest a land drive. See Ans. 7;
Fredelake col. 4,11. 62—69, col. 5,11. 4—5, Figs. 1—6.
Appellant further argues the Examiner has not presented sufficient
motivation to combine Fredelake and Bryham. App. Br. 12—13.
Specifically, Appellant argues the rigid elongate members in Bryham would
be incompatible with the wheel system disclosed in Fredelake. App. Br. 13—
14. Appellant further argues Fredelake “teaches a preference to not drive
the wheels.” App. Br. 13.
We are not persuaded by Appellant’s arguments for the same reasons
as set forth supra with respect to the combination of the Schad and Bryham
references. The Examiner relies on Bryham to teach or suggest the wheels
connectable to a power source for driving the wheels, and combines Bryham
with Fredelake to “allow the vehicle to be driven into and out of the water
under its own power.” Final Act. 7; see also Final Act. 8; Ans. 7. The
Examiner’s rejection is not, as Appellant argues, a bodily incorporation of
Bryham into Fredelake, but rather, based upon the combined teaches of the
references. Appellant has not provided persuasive evidence or explanation
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showing the Examiner’s asserted combination is anything other than a
combination of familiar elements yielding no more than predictable results.
See Final Act. 7 (“[t]he rejection combines known features to achieve
expected results”). Nor has Appellant shown that combining the prior art
was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog, 485 F.3d at
1162 (citing KSR, 550 U.S. at 418—19). We find that the Examiner has
articulated how the claimed features are met by the proposed combination of
the reference teachings with some rational underpinning, consistent with the
guidelines stated in KSR. See Final Act. 7—8; Ans. 7—8.
Moreover, we are not persuaded by Appellant’s teaching away
argument. See Galderma, 737 F.3d at 738 (“A reference does not teach
away,... if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.”)
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 over the combination of Fredelake and
Bryham. Appellant essentially repeats the same arguments with respect to
independent claim 24. See App. Br. 12. Therefore, for the same reasons, we
are not persuaded the Examiner erred in rejecting independent claim 24, as
well as dependent claims 1—8, 10, 13, 17—21, 23, 24, 26, 27, 31, and 32,
which were not argued separately (see App. Br. 16).
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DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 1—8, 10-13, 15—21, 23—27, and 29—32 is affirmed.
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
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