Ex Parte Kormann

Patent Trial and Appeal Board

Sep 14, 2017

13704315 (P.T.A.B. Sep. 14, 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.
13/704,315 06/18/2013 Oliver Kormann 0723-773 2656
65363 7590 09/18/2017
TnHH A VAUGHN
EXAMINER
Jordan IP Law, LLC POLAY, ANDREW
12501 Prosperity Drive, Suite 401
Silver Spring, MD 20904 ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
tvaughn@jordaniplaw.com
admin2 @ j ordaniplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER KORMANN
Appeal 2016-005689
Application 13/704,315
Technology Center 3600
Before JUSTIN BUSCH, STACEY G. WHITE, and JOHN D. HAMANN,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 30-47. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-005689
Application 13/704,315
CLAIMED SUBJECT MATTER
Claims 30, 41, and 43 are independent claims. The claims relate
generally to a watercraft with height adjustable hydrofoils. Spec. 12.
Claims 30 and 32—34 are reproduced below:
30. A watercraft comprising:
a hull;
at least one hydrofoil which is height-adjustable between a
position disposed in an interior region of the hull and a position remote
from the internal region of the hull;
a recess provided in the hull which accommodates the hydrofoil
in the position situated in the interior region of the hull; and
an arm provided on the hull,
wherein the at least one hydrofoil is pivotably attached to the arm about
a longitudinal axis of the watercraft.
32. The watercraft of claim 30, wherein the arm is
telescopically extendable.
33. The watercraft of claim 32, further comprising a jet drive
arranged on the arm.
34. The watercraft of claim 33, wherein the recess
accommodates the jet drive and comprises a flow channel having
an inflow channel and an outflow channel.
REJECTIONS
Claims 30-47 stand rejected under 35 U.S.C. 112, 1 for failing to
comply with the written description requirement. Final Act. 4—5.
Claims 30-47 stand rejected under 35 U.S.C. 112,12 for failing to
particularly point out and distinctly claims the subject matter to which the
invention is directed. Final Act. 5—6.
Claims 30, 32, 35, and 38—40 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Langevin (FR 2,563,177; Oct. 25, 1985). Final Act. 6—7.
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Application 13/704,315
Claims 30 and 35—37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Meyer (US 3,968,762; July 13, 1976) and Barkley
(US 3,213,818; Nov. 4, 1963). Final Act. 7-9.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Langevin and Green (US 4,577,583; Mar. 25, 1986).
Final Act. 9—10.
Claims 30 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Irgens (US 3,150,626; Sept. 29, 1964) and Barkley.
Final Act. 10—11.
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Irgens, Barkley, and Hinderks (US 7,984,684 B2;
July 26, 2011). Final Act. 11—12.
Claim 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Langevin and Griffin (US 4,577,583A; Apr. 16,
2002). Final Act. 12-13.
Claims 43 and 45—47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Meyer, Barkley, and Daniel (US 4,452,166; June 5,
1984). Final Act. 13—15.
Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Meyer, Barkley, Daniel, and Green (US 4,577,583;
Mar. 25, 1986). Final Act. 15—16.
OPINION
As an initial matter, we note Appellants substantively contest only the
obviousness rejection of claims 33 and 34. Br. 6—12; Ans. 2—3. “An appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
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Application 13/704,315
entered by the Office.” 37 C.F.R. § 41.31 (c). “If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner's answer.” Manual of Patent Examining Procedure
(“MPEP”) § 1205.02 (9th ed., Rev. 11. 2013, Mar. 2014). Accordingly, we
summarily sustain the rejections of: (1) claims 30-47 under
35 U.S.C. § 112,11; (2) claims 30-A7 under 35 U.S.C. § 112,12; (3)
claims 30, 32, 35, and 38—40 under 35 U.S.C. § 102; and (4) claims 30—32,
35-37, and 41^17 under 35 U.S.C. § 103.
Because we sustain at least one rejection of each pending claim, we
need not address Appellant’s argument that claims 33 and 34 are not
rendered obvious by the combination of Irgens, Barkley, and Hinderks.
Nevertheless, we briefly address Appellant’s arguments, which we find
unpersuasive for the reasons discussed below.
Appellant argues the combination of Irgens, Barkely, and Hinderks
fails to teach or suggest a “flow channel having an inflow channel and an
outflow channel,” as recited in claim 34. Br. 8—9. Initially, we note the flow
channel limitation is recited only in claim 34, not in claim 33.
The Examiner finds Irgens’s element 31 discloses the recited flow
channel because it “inherently possess an artificial course in which water
flows (‘channel’) in which water flows into Element 31, the inflow channel,
and out of Element 31, the outflow channel, when the vessel is moving.”
Final Act. 12. The Examiner further explains that the recited flow channel
“is not connected operationally to the jet drive,” and “Irgen[s’s] channel is
the space between the hull and the retractable hydrofoil,” in which “[wjater
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Application 13/704,315
can flow in the right side and flow out the left of Element 31 as shown in
Figure 9 of frgens.” Ans. 3^4. The Examiner further finds frgens’s
disclosed flow channel is the same as Appellant’s disclosed channel between
its hull and retractable hydrofoil, depicted in Figure 20 of the Specification.
Id. at 4.
Appellant did not file a Reply Brief and provides no persuasive
argument that the channel the Examiner specifically identifies fails to
disclose the recited channel. Therefore, we are unpersuaded by Appellant’s
argument that frgens fails to disclose the recited flow channel.
Appellant also argues there is no motivation to combine frgens,
Barkely, and Hinderks. Br. 9—12. This argument is foreclosed by KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court
rejected the rigid requirement of a teaching, suggestion, or motivation to
combine known elements in order to show obviousness. KSR Int 7 Co., 550
U.S. at 415. An obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418. Although an explicit
teaching, suggestion, or motivation may be sufficient to support a
combination, other reasons for making the proposed combination may also
suffice. As discussed further below, the Examiner articulates a sufficient
reason for the proposed combination.
Furthermore, Appellant’s restated argument that frgens does not
disclose a flow channel or has no reason to include a flow channel is
irrelevant to whether there is sufficient rationale for combining the
references as proposed by the Examiner. See Br. 10—11. First, as discussed
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Application 13/704,315
above, we disagree that Irgens fails to disclose a flow channel. Additionally,
Appellant’s argument that there is no reason to modify Irgens to include a
flow channel is unpersuasive because Irgens does not need to be modified in
order to teach or suggest a flow channel. See Br. 11; Ans. 5—6.
Appellant’s argument that “[t]he non-obvious advantage of permitting
the jet drive to be operated in a completely retracted state in order to achieve
minimal draft, by consequence, is not achievable by the asserted
combination of Irgens, Barkley, and Hinderks” is also unpersuasive. Br. 11
(emphasis omitted). Not only do claims 33 and 34 fail to recite the alleged
advantage, claims 33 and 34 recite no relationship between the jet drive and
the flow channel.
Finally, Appellant argues there is no “causal link” between the cited
references, one would have to “entirely deconstruct the Irgens device
. . . requiring] a complete change in philosophy of Irgens, which lacks any
recognition for the combination of a recess that accommodates a jet drive
and which comprises a flow channel,” and modifying Irgens would
“frustrate the purpose of the Irgens design.” Br. 11—12 (emphasis omitted).
Appellant’s arguments are merely conclusory attorney statements
without persuasive explanation of how or why Irgens’s purpose would be
frustrated, or what changes would require deconstruction of Irgens’s device
or a change in philosophy of Irgens. Such lawyer argument and conclusory
statements unsupported by factual evidence are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”).
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Application 13/704,315
Moreover, the Examiner has provided a persuasive rationale for the
combination of the cited references. Final Act. 10—12. Appellant has not
demonstrated persuasively that the Examiner’s rationale is insufficient. In
order to support a legal conclusion of obviousness, the Examiner must
articulate a reason with rational underpinning to support the legal conclusion
of obviousness. See KSR, 550 U.S. at 418. We see no error in the rationale
articulated by the Examiner.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of: claims 30-47 under 35 U.S.C. § 112, || 1, 2; claims
30, 32, 35, and 38—40 under 35 U.S.C. § 102; and claims 30-37 and 41—47
under 35 U.S.C. § 103.
DECISION
For the reasons discussed above, we affirm the Examiner’s decision to
reject claims 30-47.
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.
§ 41.50(f).
AFFIRMED
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