Ex Parte Abel

Board of Patent Appeals and Interferences

May 29, 2009

10616460 (B.P.A.I. May. 29, 2009)

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.
10/616,460 07/08/2003 Jeff Abel 13.001.CON 1046
22147 7590 06/01/2009
DAVID R. MCKINNEY, P.C.
P.O. BOX 1460
SANDY, UT 84091
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
06/01/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFF ABEL
__________

Appeal 2009-1897
Application 10/616,460
Technology Center 3600
__________

Decided:1 June 1, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a fishing
net and a method of using it. The Examiner has rejected the claims as

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
The Specification discloses “a sport fishing net with a length
measuring scale incorporated into the net, such that a user may visually
determine the length of a fish contained in the net” (Spec. 1: 6-9).
Figure 1 of the Specification is shown below.

Figure 1 shows “a perspective view of a fish net with length measuring
scale” (id. at 3: 18-20).
Claims 1, 2, 4-14, 16-18, and 20-24 are on appeal. Claim 1 is
representative and reads as follows:
Claim 1: A fish net device, comprising:
a. a frame;
b. a net of flexible net material, attached to the frame, the frame
holding the net in a position to land a fish; and
c. a flexible length measuring scale, permanently disposed generally
linearly on a surface of the net, such that a user may determine a size of the
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fish held in the net by visually comparing the fish with the length measuring
scale.

The claims stand rejected as follows:
• claims 1-2, 4, 11, 18 and 22-24 under 35 U.S.C. § 102(b) as being
anticipated by Chat;2
• claims 5-10, 13, 14, 16, 17, 20 and 21 under 35 U.S.C. § 103(a) as
being obvious in view of Chat and Bryant;3 and
• claim 12 under 35 U.S.C. § 103(a) as being obvious in view of Chat
and Caddis.4
ANTICIPATION
Issue
The Examiner has rejected claims 1-2, 4, 11, 18 and 22-24 under 35
U.S.C. § 102(b) as anticipated by Chat. The Examiner finds that Chat
discloses a fish net comprising, among other things, “a flexible length
measuring scale … permanently disposed generally linearly on a surface of
the net …, such that a user may determine a size of a fish held in the net by
visually comparing the fish with the length measuring scale” (Ans. 3)
Appellant contends that the Examiner erred in concluding that Chat
discloses a flexible length measuring scale (Appeal Br. 11).

2 Chat, FR 2,582,190, Nov. 28, 1986. Our citations are to the English-
language translation of record.
3 Bryant et al., US 5,501,026, Mar. 26, 1996.
4 Caddis Manufacturing, Inc. online catalog page 1, 2000, downloaded Oct.
09, 2002 at http://www.caddis.com/Sorts/u-shaped.htm.

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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Chat discloses a fishing net comprising
“a flexible length measuring scale” as recited in claim 1?
Findings of Fact
1. Chat discloses a gauge that allows “fishermen to measure fish
quickly and precisely regardless of the orientation of the fish in the gauge,
and without having to unhook the bait or touching the fish” (Chat 1).
2. Chat discloses that the “gauge is in the form of a molded plastic or
drawn metal channel” (id.).
3. Chat discloses that the “cross section of the channel may be
rectangular, round, oval, etc.” (id.).
4. The Figure of Chat is shown below:

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The Figure shows that the “bottom of the netting (G) is affixed to the gauge
by means of holes, which are arranged over the periphery of the gauge by
means of a cord (H), which passes alternately through each hole or ring (J)
and into the mesh of the net” (id. at 2).
5. Chat discloses that “[w]hen the fish is caught with the help of this
landing net, it lands directly in the gauge” (id.).
Principles of Law
“To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,
1566 (Fed. Cir. 1996).
Analysis
Claim 1 is directed to a fishing net that comprises, among other
things, a flexible-length measuring scale disposed on a surface of the net.
Appellant argues that Chat does not disclose a flexible length
measuring scale because Chat “discloses a rigid gutter with length markings.
… The relative inflexibility of the gutter is implicit in Chat because the
gutter would not be able hold a fish if it were flexible to any significant
extent” (Appeal Br. 11). Appellant also argues that “there is no indication in
Chat that suggests that this gutter is or can be flexible” (id.).
The Examiner reasons that Chat’s length-measuring scale “is deemed
flexible in that it contains flexible connection elements – at H being cords,
straps or – at J being ring elements which allow for the measuring scale to be
flexibly connected to the net” (Ans. 9).
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Appellant’s arguments are persuasive. Claim 1 recites “a flexible
length measuring scale.” The Specification’s Figure 1, which is said to
show an embodiment of the disclosed net, shows a length-measuring scale
with sufficient flexibility to conform to the shape of the net. Giving the
claim language its ordinary meaning, and reading it in light of the
Specification, one of skill in the art would interpret the claim to require that
the length-measuring scale itself is flexible rather than simply requiring that
the length-measuring scale comprises flexible elements.
Chat discloses that its length-measuring scale is made from molded
plastic or metal. The Examiner has not adequately explained how Chat
discloses the claim limitation of claim 1 of “a flexible length measuring
scale.” The anticipation rejection of claim 1 is reversed.
Claims 2, 4, 11, and 22-24, depend directly or indirectly from claim 1.
The rejection of these claims as anticipated by Chat is reversed for the
reasons discussed above.
Claim 18 is directed to a method of measuring a size of fish that
comprises, among other steps, placing a fish within a fish net device that has
“a flexible length measuring scale” disposed on the net material. Thus, the
rejection is reversed for the reasons discussed.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that Chat discloses “a flexible length measuring scale” as recited in claim 1.
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OBVIOUSNESS I
The Examiner has rejected claims 5-10, 13, 14, 16, 17, 20 and 21
under 35 U.S.C. § 103(a) as obvious in view of Chat and Bryant (Ans. 5, 7,
9).
Claims 5-10 and 13 depend on claim 1 and claim 20 depends from
claim 18. The Examiner relies on Chat as discussed above and provides the
Bryant reference to supply dependent claim limitations. As discussed above,
however, the Examiner has not adequately explained how the cited
references would have suggested the claimed “flexible length measuring
scale.” The rejection of claims 5-10, 13 and 20 is reversed.
Claim 14 is independent and, like claim 1, is directed to a fish net
device that comprises “a flexible length measuring scale.” The Examiner
relies on Chat as discussed above and finds that Bryant discloses a handle, a
substantially closed loop portion attached to the handle, and the net being
attached to the closed loop portion (Ans. 8). However, the Examiner has
pointed to nothing in Bryant to suggest the flexible length-measuring scale
missing from Chat. Claims 16, 17 and 21 depend from claim 14. Thus, the
rejection of claims 14, 16, 17, and 21 is reversed for the reasons discussed
above.
OBVIOUSNESS II
Issue
The Examiner has rejected claim 12 under 35 U.S.C. § 103(a) as
obvious in view of Chat and Caddis.
The Examiner relies on Chat as discussed above, but acknowledges
that Chat does not disclose the length-measuring gauge disposed directly on
the net by weaving, embroidering, printing, or silk-screening, as recited in
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claim 12 (Ans. 7). The Examiner relies on Caddis as disclosing that the
“length measuring scale is disposed directly on the net by a process selected
from the group consisting of weaving into the material of the net,
embroidering onto the material of the net, printing on the material of the net,
and silk-screening on the material of the net” (id.). The Examiner concludes
that “it would have been obvious to one of ordinary skill in the art to take the
fish net of [Chat] and add the measuring scale disposed on the net from one
of the methods described above of Caddis, so as to make the device more
durable in that the length scale is permanently attached to the net” (id.).
Appellant contends that the Examiner erred in concluding that the
cited references suggest the invention of claim 12 because there is no
motivation to combine the cited references to arrive at the invention of claim
12 (Appeal Br. 27-28).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that one of skill in the art would have
been motivated to combine the cited references to arrive at the invention of
claim 1?
Additional Findings of Fact
6. Chat discloses that the “double gradations [printed on the gauge]
allow the size of the fish to be read regardless of the orientation of the fish
by making the fish slide against the end piece, which is opposite the nose of
the fish, so that the length of the fish can be read” (Chat 2).
7. Chat discloses that “[i]f the fish is too small to be kept by the
fisherman, the fish is immobilized in the gauge by clamping it with the help
of the netting to the landing net. As a result, it is possible to unhook the bait
without having to touch the fish” (id.).
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8. Caddis discloses a U-shaped float tube that includes a “wide nylon
coated all mesh working and stripping apron” (Caddis 1).
9. The Examiner finds that the pictures shown in Caddis include a
“length measuring scale … disposed directly on the net” (Ans. 7).
10. Appellant states that “[t]here appears to be a length measuring
scale printed upon th[e] stripping apron” of the Caddis float tube (Appeal Br.
25).
Principles of Law
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. … [I]t can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Analysis
Claim 12 depends on claim 1, and further requires that “the length
measuring scale comprises markings disposed directly on the net material,
said markings being selected from the group consisting of: woven markings;
embroidered markings; printed markings; and silk-screened markings.”
The Examiner finds that the additional limitation would have been
suggested by Caddis (Ans. 7). Appellant contends that the Examiner has not
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provided adequate reason to combine the elements of Chat and Caddis
(Appeal Br. 27-28). Appellant also contends that the resulting product
“would be non-functional because one could not measure a fish in the gutter
according to the teachings of Chat. Chat requires that a fish be placed in the
gutter with its nose abutting one of the end stops” (id. at 28).
We agree with Appellant that the Examiner has not shown that the
product of claim 12 would have been obvious based on Chat and Caddis.
Chat discloses a rigid gauge that serves the purposes of holding fish to allow
measurement in either orientation and allowing hook removal without
handling the fish (FFs 1, 6 and 7). Caddis discloses a float tube that includes
a stripping apron with a length-measuring scale printed on it. Given the
stated purposes of Chat’s gauge, the Examiner has not adequately explained
why one of skill in the art would have considered it obvious to replace the
gauge with markings directly on the netting. Removal of the gauge would
appear to defeat the purposes of the Chat device because the modified device
would not allow the fish to be held for measuring without adjustment or
allow hook removal without handling the fish.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that one of skill in the art would have been motivated to combine the cited
references to arrive at the invention of claim 12.
SUMMARY
We reverse the rejection of claims 1-2, 4, 11, 18 and 22-24 under 35
U.S.C. § 102(b) as anticipated by Chat. We also reverse the rejections under
35 U.S.C. § 103(a) of claims 5-10, 13, 14, 16, 17, 20 and 21 as obvious in
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view of Chat and Bryant and of claim 12 as obvious in view of Chat and
Caddis.

REVERSED

LP

DAVID R. MCKINNEY, P.C.
P.O. BOX 1460
SANDY UT 84091