Ex Parte Lloyd

Patent Trial and Appeal Board

Nov 14, 2014

12011415 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/011,415 01/26/2008 Jerrod Robert Lloyd 8156
7590 11/14/2014
Jerrod R. Lloyd
314 Irving Ave.
Millville, NJ 08332
EXAMINER
AVILA, STEPHEN P
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
11/14/2014 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 JERROD ROBERT LLOYD
____________

Appeal 2012-010778
Application 12/011,415
Technology Center 3600
____________

Before JOHN C. KERINS, THOMAS F. SMEGAL and LEE L. STEPINA,
Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jerrod Robert Lloyd (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 2, 5, 6, 9, 12, 15, and
17−19. Claims 3, 4, 7, 8, 13, 14, and 16 are not subject to any rejection
based upon prior art, but instead are objected to as being dependent upon a
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rejected base claim, and are thus not before us on appeal.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below, with emphasis on the key
disputed claim limitation.
1. An apparatus for absorbing, dampening and/or reducing the
distribution of sounds, force and/or vibrations produced by an
electric trolling motor, which also absorbs sound and vibrations
[from] and also protects the electric trolling motor from
potential damage resulting from impact force created should the
trolling motor experience contact with a submerged object or
experience some other form of trauma; comprised of the
application of a customized rubber or synthetic rubber, an
elastomer, covering, or a covering of another material with
sound and force dampening qualities, to a portion of an electric
trolling motor unit.

Amendment filed September 7, 2011, page 9.

REJECTIONS ON APPEAL

The following Examiner’s rejections are before us for review.2

1 In the final rejection mailed November 11, 2008, claims 3, 4, 7, 8, 13, 14,
and 16 were indicated to be “allowable if rewritten in independent form to
include all of the limitations of the base claim and any intervening claims.”
Final Office Action, page 3.

2 The Final Office Action contains several objections relating to previously
filed amendments and drawings. Such issues either relate to petitionable
matters and/or are not appealable matters. See In re Schneider, 481 F.2d
1350, 1356-57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA
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1. Claims 1, 2, 5, 6, and 17−19 are rejected under 35 U.S.C.
§102(b) as anticipated by Cain (US 4,944,702, iss. July 31,
1990).
2. Claims 9−12 and 15 are rejected under 35 U.S.C. §103(a)
as unpatentable over Cain and Donovan (US 6,712,059, iss.
Mar. 30, 2004).3

Appellant identifies a rejection of claims 1–19 under 35 U.S.C. § 112,
second paragraph, in the “Grounds of Rejection to be Reviewed on Appeal”
section at page 6 of the Appeal Brief. However we do not see any such
rejection in the Final Office Action or in the Examiner’s Answer.
ANALYSIS
Anticipation of Claims 1, 2, 5, 6, and 17−19 by Cain
Appellant argues claims 1, 2, 5, 6, and 17−19 as a group and presents
separate arguments only for claim 1. Appeal Br. 8−12. We select claim 1 as
the representative claim for this group and the remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37 (c)(1)(vii) ( 2011).
We have considered Appellant’s arguments but do not find them
persuasive to demonstrate error in the Examiner’s rejection of claim 1 as
being anticipated by Cain. “A reference anticipates a claim if it discloses the
claimed invention ‘such that a skilled artisan could take its teachings in

1967). See also the MPEP § 1002.02(c), item 3(a) and § 1201. Thus, the
relief sought by Appellant should be presented by a petition to the
Commissioner under 37 C.F.R. § 1.181 instead of by appeal to this Board.
Accordingly, we will not further consider these issues.
3 We note that claim 11 contains the same limitation common to claims 3, 4,
7, 8, 13, 14, and 16. Thus, it appears that claim 11 should have been
grouped with the “objected to” claims, rather than rejected as unpatentable
over Cain and Donovan.
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combination with his own knowledge of the particular art and be in
possession of the invention.’” In re Graves, 69 F.3d 1147, 1152, 36
USPQ2d 1697, 1701 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929,
936, 133 USPQ 365, 372 (CCPA 1962), In re Donohue, 766 F.2d 531 (Fed.
Cir. 1985)).
Appellant first argues that “[t]he Cain Patent does not teach ‘every
aspect of the claimed invention either explicitly or impliedly’. . . . The
primary element in the construction of the Cain Patent is a vertical plane of
symmetry with large side walls” and that the claims “do not contain this
element.” Appeal Br. 9. While Appellant’s observation as to the disclosure
of Cain may be correct, Appellant’s argument is not responsive to the
Examiner’s rejection.4
The Examiner finds that
Cain discloses the claimed apparatus including a system for
dampening sound (column 1, lines 51[–]53) and reducing the
distribution of forces (impact resistant column 2, lines 12[–]15)
of a trolling motor with a cover 10 of a material other than
rubber with sound (note for example, column 1, lines 50[–]55)
and force damping qualities (note for example column 2, lines
10[–]15) to a portion of an electric trolling motor unit 13. Note
also that the cover includes a notch at 27 to fit flush to a keel 15
(note Figure 6, for example) and is formed in two parts (Figure
4) to be snapped together (column 3, line 35) onto the trolling
motor unit.

Final Office Action 2. Also see Answer 3.

4 A rejection based upon anticipation requires only that the Examiner find,
in a single prior art reference, the elements set forth in a claim, arranged in
the manner set forth in the claim. That a cited reference may additionally
include one or more structural elements that are not recited in a claim is not
germane to whether the reference anticipates the claim.
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Appellant then contends that “[a] trolling motor fitted with the rudder
envisioned by the Cain Patent would not properly sit on a trolling motor
deployment mount affixed to a boat” and that “the Cain Patent does not have
a durable design to protect a trolling motor from impact with submerged
objects.” Appeal Br. 10. While these arguments are not persuasive as they
lack evidentiary support, neither argument is commensurate with the scope
of claim 1. Claim 1 is not limited to a particular relationship between a
trolling motor and a trolling motor deployment mount nor, to a durable
design, as the claim only recites “a customized rubber or synthetic rubber, an
elastomer, covering, or a covering of any other material . . . to a portion of
an electric trolling motor” which is taught by Cain.
Appellant also argues that “the invention would be designed as a
streamlined covering essentially molded to the shape of the covered portion
of the trolling motor unit. Figure 1 of the drawings in the application makes
this clear as well.” Appeal Br. 12. Again, Appellant’s argument is not
commensurate with the scope of claim 1, which is not limited to a covered
portion with a streamlined shape. Furthermore, as we are instructed by our
reviewing court, “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321(Fed. Cir. 1989)).
In the Reply Brief, Appellant repeats essentially verbatim the
arguments presented on pages 8−12 of the Appeal Brief. See Reply Br. 3−6.
In addition, Appellant argues that the Examiner has failed to respond to the
allegation that “[i]t is clear that because the Cain Patent is essentially a large
fin, that it would not offer protection to the lower unit in terms of shock
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protection. It does not protect it at all.” Reply Br. 6. Once again,
Appellant’s argument is not commensurate with the scope of claim 1, which
is not limited to protection as provided by a particular size of fin.
For the foregoing reasons, Appellant does not apprise us of any error
in the Examiner’s findings, and thus, we sustain the Examiner’s rejection of
claims 1, 2, 5, 6, and 17−19 as being anticipated by Cain.
Obviousness of claims 9−12 and 15 over Cain and Donovan.
Claims 9, 10, 12 and 15
Appellant argues dependent claims 9, 10, 12, and 15 as a group.
Appeal Br. 12–19. We select claim 9 as the representative claim for this
group such that the remaining claims stand or fall with claim 9. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellant initially contends that Cain does not “teach [] a streamlined
device applied externally to a trolling motor to dampen noise and protect the
trolling motor from external damage.” Appeal Br. 14. However we agree
with the Examiner that the claims do not set forth limitations such as “the
shape of the device, whether or not that it is used for steering, is streamlined
or that it operates only at high speed.” Answer 3. Thus, as we have already
pointed out, “limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d at 1184 (citing Zletz, 893 F.2d at
321.
Appellant also argues that Donovan involves “rubbery dampers
designed to reduce vibration and absorb shock in an archery bow” and that
Donovan “has absolutely nothing to do with trolling motors and aquatic
disturbance. The only comparison is that they both attempt to act as
dampeners.” Appeal Br.15. However, the Examiner has cited Donovan for
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teaching a “vibration reducing device attached with adhesive (note the
Abstract, for example).” Answer 2. Thus, Appellant is simply attacking
Donovan in isolation, rather than as combined with Cain in the manner
articulated by the Examiner. However, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir.1986). Further, Appellant does not
identify the Examiner’s error in finding obvious “substituting known
equivalents such as a snap fit of parts with adhesively joining the parts.”
Answer 3.
Secondary considerations.
Appellant filed a Declaration on September 7, 2011, alleging that
“[t]here is a long-felt need for the Subject Claims.”5 Appeal Br.19, 20.
When such evidence is presented, it is our duty to consider all evidence
anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
However we are also mindful that objective evidence of non-obviousness in
any given case may be entitled to more or less weight depending on its
nature and its relationship with the merits of the invention. See Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).
In support of the contention that there is a long-felt need for the
Subject Claims, Appellant’s Declaration states, inter alia, that “at least one
other patent application has been filed which seeks to address the need for
dampening trolling motors[;]” that an article has been published discussing

5 We assume “Subject Claims” is intended to identify claims 9, 10, 12, and
15, the only claims for which we sustain the rejection of being obvious over
Cain and Donovan.
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how the Bowjax Invention “fills a long felt need in the art[;]” that the
Bowjax Invention “is currently being sold at one of America's largest retailer
of outdoor products, Cabela’s Inc.[;]” that “[t]he subject matter of the
Bowjax Invention falls within the Subject Claims and was an earlier, less-
refined concept of the Subject Claims[;]” and that Appellant “has also been
engaged in discussions with a major dampening product company for
licensing of the rights to the Subject Claims, thus evidencing its commercial
viability.” 6 Appeal Br. 19−21 (citation omitted), see also Reply Br. 12−15.
While nexus is required between the rebuttal evidence and the merits
of a claimed invention, Appellant’s Declaration provides no evidence of a
long felt need for the arrangement recited in the Subject Claims, only
identifying an article discussing how the Bowjax Invention “fills a long felt
need in the art.” Although Appellant states “[t]he subject matter of the
Bowjax Invention falls within the Subject Claims and was an earlier, less-
refined concept of the Subject Claims,” Appellant does not point to any
persuasive evidence that the Bowjax Invention indeed corresponds to what is
recited in Appellant’s claims. Appeal Br. 21.
Appellant’s Declaration also does not provide persuasive evidence
that there are actual sales of the arrangement recited in the Subject Claims,
but rather, states that there are sales of the Bowjax Invention and that the
Subject Claims have been the subject of licensing “discussions with a major
dampening product company.” Appeal Br. 21.
In ex parte proceedings before the Patent and Trademark Office, an
applicant must show that the claimed features were responsible for the

6 Appellant identifies the “Bowjax Invention” as the subject matter of the ‘at
least one other patent application.’”
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commercial success of an article if the evidence of nonobviousness is to be
accorded substantial weight. Merely asserting commercial success of an
article-alleged to embody an invention that is being offered for sale by
another-is not sufficient. See Ex parte Remark, 15 USPQ2d 1498, 1502-03
(BPAI 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1394 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988). See also
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985)
(commercial success may have been attributable to extensive advertising and
position as a market leader before the introduction of the patented product).
After our thorough review of Appellant’s Declaration, we find that the
evidence of long felt need is not sufficient to outweigh the evidence of
obviousness. Further, on the basis of the limited information provided by
the Appellant, we conclude that the Appellant has failed to persuasively
establish commercial success of the arrangement recited in the Subject
Claims.
For the foregoing reasons, we sustain the rejection of claims 9, 12 and
15 as unpatentable over Cain and Donovan.

Claim 11
Dependent Claim 11 recites the same limitation for which it appears
the Examiner found dependent claims 3, 4, 7, 8, 13, 14, and 16 to be
“allowable if rewritten in independent form to include all of the limitations
of the base claim and any intervening claims.” Final Office Action 3.
For that reason, we will not sustain the Examiner’s rejection of claim
11.

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DECISION
The rejection of claims 1, 2, 5, 6, and 17−19 under 35 U.S.C. § 102(b)
is AFFIRMED.
The rejection of claims 9, 10, 12, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Cain and Donovan is AFFIRMED.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Cain and Donovan is REVERSED.
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-IN-PART

rvb