Ex Parte Sirvio et al

Board of Patent Appeals and Interferences

Oct 15, 2009

10500056 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JARI SIRVIO and OLLI SALMELA
____________

Appeal 2009-002705
Application 10/500,056
Technology Center 3600
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Decided: October 15, 2009
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Before LINDA E. HORNER, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jari Sirvio et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 8-13 and 15-17. Claims 1-7, 14, and
18 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a system for steering a watercraft
including a main propulsion device 3 activated by diesel engines 4 and shaft
5 and steering propulsion devices 2 located close to the outboard 6 of the
watercraft on both sides of the main propulsion device 3. Spec. 2, ll. 16-18;
Spec. 4, l. 28 through Spec. 5, l. 2; and figs. 1A and 1B.
Claim 8 is representative of the claimed invention and reads as
follows:
8. A water craft having an aft region and first and
second opposite sides and comprising:

a hull,

a cargo deck at least in the aft region of the water
craft and above which the hull defines a cargo
space for accommodating trucks and other wheeled
cargo,

a main propulsion means located in the aft region
of the water craft for propelling the craft in a
forward direction, and

at least first and second steering propulsion
devices located in the aft region of the water craft
to the first and second sides respectively of the
main propulsion means, each steering propulsion
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device being selectively variable with respect to its
propulsion direction, whereby steering of the water
craft is continuously provided by the steering
propulsion devices without a separate rudder
means functionally connected to the main
propulsion means,

wherein the steering propulsion devices are
installed below the cargo deck,

and wherein the output required by the steering
propulsion devices is in all less than 50% of the
common shaft output of the main propulsion
means and of the steering propulsion devices.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Oshima (translation) JP 090142391 A Jun. 3, 1997
Tigges CA 2 373 462 A1 Nov. 16, 2000

Appellants seek review of the Examiner’s rejection of claims 8-13 and
15-17 under 35 U.S.C. § 103(a) as unpatentable over Tigges and Oshima.

THE ISSUE
The Examiner found that Tigges discloses all the features of
independent claim 8, with the exception of first and second steering
propulsion devices located in the aft region of the watercraft to the first and
second sides of the main propulsion means. Ans. 3. The Examiner further
found that Oshima discloses a steering propulsion system including two
rotatable steering propulsion units located in the aft region of the watercraft
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on the first and second sides of the main propulsion means. Id. The
Examiner concluded that it would have been obvious to a person of ordinary
skill in the art to have substituted the propulsion system of Tigges with the
arrangement of Oshima in order to provide a “high output, low maintenance
propulsion system and more positive steering” in addition to reduction of
underwater noise. Ans. 4, 6, and 7.
Appellants argue that the Examiner has not provided a plausible
reason to combine the teachings of Tigges and Oshima. App. Br. 12, 13.
Specifically, Appellants argue that the Examiner has not shown any problem
that may affect the ship of Tigges and that would be alleviated by the
propulsion system of Oshima. App. Br. 12. Appellants further argue that
Tigges’s cargo ship is exclusively propelled by rudder propellers, without a
main propulsion means between the rudder propellers, and that the hull is
“optimized for a rudder propeller.” Id. Hence, according to Appellants, a
person of ordinary skill in the art would not have been motivated to modify
the propulsion system of Tigges to include the propulsion system of Oshima,
as suggested by the Examiner. App. Br. 12, 13.
Accordingly, the issue presented for our consideration is the
following:
Have Appellants demonstrated that the Examiner erred in determining
that the combined teachings of Tigges and Oshima would have prompted a
person of ordinary skill in the art to substitute the propulsion system of
Tigges with that of Oshima to include a main propulsion means and two
rotatable steering propulsion units located on the first and second sides of
the main propulsion means?

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SUMMARY OF DECISION
We REVERSE.

PRINCIPLES OF LAW
Obviousness
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." KSR at 418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
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cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness")).
OPINION
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the Examiner has the initial duty of supplying the
requisite factual basis and may not, because of 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, 1017 (CCPA 1967).
The Examiner asserts that:
. . . it would have been obvious to one having
ordinary skill in the art at the time of the invention
to substitute for the propulsion/steering means in
Tigges with an arrangement including a main
propulsion means located in the aft region of the
watercraft for propelling the watercraft in a
forward direction and first and second steering
propulsion devices located in the aft region of the
watercraft on the first and second sides of the main
propulsion means generally as taught by Oshima.
…

The advantage of having a high output, low
maintenance propulsion system and more positive
steering provided by rotatable steering propellers
would provide the motivation to modify the
propulsion-steering arrangement of Tigges et al
with a propulsion-steering arrangement as taught
by Oshima. The reduction in noise created by the
propulsion unit would be just another benefit.

Ans. 3, 4, and 7.
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We find the Examiner’s purported reason for modifying the rudder
propeller system of Tigges to include the propulsion system of Oshima, (a
main propulsion means and two rotatable steering propulsion units located
on the first and second sides of the main propulsion means), deficient
because the overall design of Tigges’s hull is matched for use with rotatable
rudder propellers.
It is our finding that Tigges discloses a watercraft for cargo and
passengers including a bow 2, a stern (located opposite the bow 2), a bridge
1, a main car deck 10, a weather deck 9, short double rudder propellers 6
located on opposite sides of the centerline of the watercraft, and a skeg 8
located in front of each double rudder propeller 6. Tigges 8, ll. 12-33 and
figs. 1 and 5.1 Tigges further discloses that the shape of the bow and of the
stern, the size and arrangement of the rudder propellers, and the skegs are
matched to one another such as to optimize the performance of the
watercraft. Tigges 9, ll. 4-9. Specifically, Tigges discloses that the skegs 8
are shaped and dimensioned so as to form a separation-free, decelerated flow
against the rudder propellers 6, hence increasing propulsion efficiency of the
rudder propellers and providing good course-holding stability. Tigges 3, l.
22 through 4, l. 14. Hence, a person of ordinary skill in the art would have
readily recognized that because the overall shape and dimensions of Tigges’
hull, skegs, and rudder propellers (propulsion system) are matched to one
another, the watercraft of Tigges is specifically designed to use a propulsion
system having short double rudder propellers 6 located on opposite sides of
the centerline of the watercraft.

1 Skegs 8 are labeled as skegs 19 in figure 5. Tigges 9, ll. 32-35, fig. 5.
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Although at first glance, substituting the propulsion system of Tigges
with that of Oshima appears to be merely “the simple substitution of one
known element for another,” (see KSR at 417), because the overall shape
and dimensions of Tigges’s hull, skegs, and propulsion system are matched
to one another, we find that a person of ordinary skill would not have been
motivated to merely substitute the propulsion system of Oshima for that of
Tigges, as proposed by the Examiner. As noted above, matching of the
overall shape and dimensions of the hull, skegs, and propulsion system
(rudder propellers) provides a separation-free, decelerated flow which
increases propulsion efficiency and course-holding stability. However, with
respect to the Examiner’s proposed combination, the Examiner has not
provided any evidence to show that when substituting the propulsion system
of Tigges with that of Oshima a separation-free, decelerated flow would
result. In other words, the Examiner has not provided any factual basis to
show that when substituting the rudder propellers of Tigges with the
propulsion system of Oshima, the overall shape and dimensions of the hull
and skegs of Tigges would be matched to the propulsion system of Oshima
so as to provide a separation-free, decelerated flow in the modified
watercraft of Tigges, or that a person of ordinary skill in the art would
understand this to be the case. Moreover, without taking into consideration
the matching of the overall shape and dimensions of the hull and skegs and
the propulsion system, we find that it is not clear that more positive steering
is necessarily present in the modified watercraft of Tigges, as suggested by
the Examiner. Ans. 7. See also, Final Rejection 4, mailed April 17, 2007.
We do not find that the Examiner has established a factual basis to show that
substituting the propulsion system of Tigges with that of Oshima necessarily
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provides more positive steering or that a person of ordinary skill in the art
would understand this to be the case.
In conclusion, we find that the modification proposed by the
Examiner of substituting the propulsion system of Tigges with that of
Oshima, to include a main propulsion means and two rotatable steering
propulsion units located on the first and second sides of the main propulsion
means, would not have been obvious to the person of ordinary skill in the
art. For the above stated reasons, we conclude that the Examiner has not
discharged the initial burden of establishing a prima facie case of
obviousness of the subject matter of independent claims 8 and 16 or their
dependent claims 9-13, 15, and 17. As such, the rejection is reversed. See
In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).

CONCLUSION
Appellants have demonstrated that the Examiner erred in determining
that the combined teachings of Tigges and Oshima would have prompted a
person of ordinary skill in the art to substitute the propulsion system of
Tigges with that of Oshima to include a main propulsion means and two
rotatable steering propulsion units located on the first and second sides of
the main propulsion means.

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DECISION
The Examiner’s decision to reject claims 8-13 and 15-17 is reversed.

REVERSED

Klh

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