Ex Parte Naughton

Patent Trial and Appeal Board

Sep 20, 2018

14727888 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/727,888 06/02/2015
114262 7590 09/24/2018
Black, McCuskey, Souers & Arbaugh, LPA
220 Market A venue, South, Suite 1000
Canton, OH 44702
FIRST NAMED INVENTOR
Chad Naughton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11107 4-0002 2462
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ip@bmsa.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD NAUGHTON
Appeal2018-002209
Application 14/727,888
Technology Center 3600
Before RICHARD H. MARSCHALL, ARTHUR M. PESLAK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Chad Naughton ("Appellant") 1 seeks our review under 35 U.S.C.
§ 134(a) of the Examiner's decision rejecting claims 1-13. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Appellant as the real party in interest. Br. 2.
Appeal2018-002209
Application 14/727,888
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a device that identifies the
location of "a snowmobile or all-terrain vehicle that has become submerged
in water after breaking through ice." Spec. ,r 11. Claim 1 is the only
independent claim, and is reproduced below.
1. A recovery device comprising:
a bladder disposable in an inflated configuration and an
un-inflated configuration;
a canister containing a compressed fluid and coupled
with said bladder;
an opening mechanism operably coupled to said canister
and said bladder such that said opening mechanism is
configured to selectively open said canister and direct the
compressed fluid into said bladder thereby converting said
bladder from said un-inflated configuration to said inflated
configuration;
a tether extending between a first end coupled to said
bladder and a second end engageable with a vehicle;
wherein said bladder in said inflated configuration
defines a volume of less than one-tenth of a cubic meter; and
at least one ice pick mounted on said bladder.
Br. 13 (Claims App.).
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable
over Davidson2 and Adams. 3
2 U.S. Patent No. 3,710,409, issued Jan. 16, 1973 ("Davidson").
3 U.S. Patent No. 3,366,983, issued Feb. 6, 1968 ("Adams").
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Application 14/727,888
2. Claims 3, 6-8, 10, and 11 under 35 U.S.C. § I03(a) as
unpatentable over Davidson, Adams, and Weinel. 4
3. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over Davidson,
Adams, Weinel, and Faletra. 5
4. Claims 12 and 13 under 35 U.S.C. § I03(a) as unpatentable over
Davidson, Adams, Weinel, Faletra, and Johnson. 6
ANALYSIS
The specification describes a recovery device used when a
recreational vehicle becomes submerged in water below ice. Spec.
,r,r 11, 21, Fig. 5. If a vehicle becomes submerged, a sensor emits a signal
that in tum triggers a canister that inflates a bladder. Id. at ,r 21. The
bladder, connected to the vehicle by a tether, then floats to the surface of the
water so that the vehicle can be drawn out of the water with the tether. Id.
In one embodiment, an ice pick is mounted to the bladder, with the ice pick
"desirable to help the rider escape the water." Id. at ,r 24. Claim 1 is
directed to certain aspects of the disclosed device, and requires "a bladder"
and "at least one ice pick mounted on said bladder." Br. 13 (Claims App.).
The Examiner found that Davidson discloses a bladder, a canister, and
a tether, but does not disclose an ice pick mounted to the bladder. Final Act.
2--4. The Examiner also found that Adams "discloses a recovery device
(buoy) [10] for recovery of items submerged in water and teaches that an ice
pick or other similar convenient instrument can be used with the device ( col.
2, lines 58 and 59)." Id. at 4. The Examiner further found that providing an
4 U.S. Patent No. 7,083,487 B2, issued Aug. 1, 2006 ("Weinel").
5 U.S. Patent No. 9,162,738 Bl, issued Oct. 20, 2015 ("Faletra").
6 U.S. Patent No. 5,657,917, issued Aug. 19, 1997 ("Johnson").
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Application 14/727,888
"ice pick as an accessory or add-on with Davidson as a matter of
convenience of use would have been recognized by one of ordinary skill in
the art." Id. The Examiner also found that the "particular location for
mounting or attaching of such an accessory would have been considered a
matter of preference and convenience for access and use." Id. In the
Answer, the Examiner found that shaft 80 in Adams "is capable of being
used as an ice pick" and that "Appellant has not claimed any unknown
material or structural feature for the ice pick, nor has applicant claimed a
specific or unknown mounting or attachment means." Ans. 4.
Appellant argues that although Adams discloses inserting an ice pick
into socket means 56, neither reference discloses an ice pick mounted to a
bladder or the benefit of mounting an ice pick on a structure that floats to the
top of the water. Appeal Br. 8. Appellant further contends that flotation
spool 76 in Adams corresponds to the claimed bladder because spool 76
floats to the surface. Id. at 6. Appellant argues that Adams discloses using
an ice pick in socket means 56, which is a feature of locking wheel 44, rather
than spool 76. Id. at 8. According to Appellant, if one were to mount the ice
pick of Adams to anything, it would not be spool 7 6 because Adams
discloses use of the ice pick on the locking wheel, which remains submerged
in casing 12 when the spool floats to the water surface. Id. Appellant also
argues that there is no rational basis for adding the ice pick to Davidson,
because Davidson discloses no structure analogous to the locking wheel in
Adams that would benefit from the use of an ice pick. Id. at 9. Regarding
the Examiner's finding that shaft 80 can be used as an ice pick, Appellant
argues that "shaft 80 remains underwater with the casing 12 when the
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Application 14/727,888
Adams device is used," rather than mounted to the flotation spool 76. Reply
Br. 2.
We agree with Appellant that the Examiner's rejection of claim 1
based on Davidson and Adams lacks adequate support. Although Adams
discloses the use of an ice pick on locking wheel 44, it does not disclose the
ice pick mounted to flotation spool 7 6, which most closely corresponds to
the claimed bladder. Adams, Figs. 1--4; 2:55---60; 3:17-19. In addition, to
the extent Adams would find mounting the ice pick to its device useful as a
matter of convenience, logic dictates that it would be mounted to the part
that Adams discloses as requiring the use of the ice pick, locking wheel 44.
See id. The Examiner's reliance on shaft 80 as a potential ice pick lacks
merit given that the ordinary meaning of an "ice pick" would not encompass
any structure merely capable of picking ice, and, as Appellant points out,
shaft 80 is not mounted to a bladder, or the Adams corollary to a bladder,
flotation device 76. See Reply Br. 2. 7 Finally, the Examiner proposes
mounting the ice pick to Davidson's bladder, but that modification lacks
adequate rational underpinnings because the Examiner fails to cite any use in
Davidson that would benefit from the use of an ice pick. See Final Act. 4.
In short, Davidson does not suggest the use of any tool, much less an
ice pick, or a logical location to mount such a device, and to the extent that
Adams suggests a location to mount an ice pick, the location would be
device 12, which becomes submerged in use, unlike Davidson's bladder.
7 In addition, the specification need not describe a structure as "critical" in
order for the structure to limit the claim and prevent the limitation from
covering any structure merely capable of performing the function of the
claimed structure.
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Application 14/727,888
Neither reference supports the proposed combination, and mere resort to the
alleged "convenience" of including an ice pick on Davidson's bladder does
not amount to a rational underpinning for the combination.
Based on the foregoing, we do not sustain the rejection of claim 1.
The Examiner does not rely on the additional references, or employ
additional reasoning in the rejections of the dependent claims, in a manner
that addresses this deficiency in the rejection of claim 1. See Final Act. 5-7.
Accordingly, we do not sustain the rejection of claims 2-13 for the same
reasons as claim 1.
DECISION
We reverse the decision of the Examiner to reject claims 1-13 under
35 U.S.C. § 103(a).
REVERSED
6