Ex Parte Arcabascio

Board of Patent Appeals and Interferences

Aug 26, 2011

11045980 (B.P.A.I. Aug. 26, 2011)

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.
11/045,980 01/31/2005 Anthony F. Arcabascio 826-001 2138
1026 7590 08/29/2011
CLIFFORD G. FRAYNE
136 DRUM POINT RD
SUITE 7A
BRICK, NJ 08723
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
08/29/2011 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 ANTHONY F. ARCABASCIO
____________________

Appeal 2010-001602
Application 11/045,980
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001602
Application 11/045,980

2
Anthony F. Arcabascio (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's rejection of claims 1 and 4-9. (App. Br. 4). Claims 2
and 3 have been canceled. (Id.) We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We AFFIRM.
The claimed invention is directed to an articulating trolling rod holder
assembly. Independent claim 1, reproduced below with emphasis, is
representative of the appealed claims:
1. An articulating trolling rod holder assembly for
trolling for fish from a vessel, the articulating trolling rod
holder assembly comprising:
a tubular support member having a first upper end
and a second lower end, said second lower end of said
tubular support member, slidably receivable within a
tubular bore formed in a gunwale of a fishing vessel, said
second lower end of said tubular support member formed
with opposing channel cutouts lockingly engageable in
said bore formed in said gunwale of said fishing vessel;
a cap member secured to said first upper end of said
tubular support member, said cap member having
opposing upstanding support arms defining a contact
surface there between, said opposing upstanding support
arms having aligned apertures there through;
a tubular rod holder defined by a first end and a
second end, said tubular rod holder having a rocker arm
depending there from, said rocker arm having an aperture
there through, said aperture alignable with said aligned
apertures in said upstanding support arms, said rocker arm
on said tubular rod holder formed with a planar front face
and an arcuate rear face permitting pivot or rotation of
said tubular rod holder from a horizontal orientation to a
vertical orientation, said planar front face engageable with
said contact surface of said cap member so as to limit said
rotation of said tubular rod holder to a horizontal
orientation; and

Appeal 2010-001602
Application 11/045,980

3
a securing means secured through said apertures in
said upstanding support arms and said aperture in said
rocker arm so as to position said tubular rod holder in
articulating relationship with said tubular support member
for a pivot or rotation from a horizontal orientation to a
vertical orientation for facilely removing a fishing rod
from said tubular rod holder.

THE REJECTIONS
The following Examiner's rejections are before us for review:
1. Claims 1, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over DeLancey (US 5,054,737; issued Oct. 8, 1991) in
view of Malmberg (US 5,778,592; issued Jul. 14, 1998) and Honig (US
3,000,599; issued Sept. 19, 1961).
2. Claims 4-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeLancey, Malmberg, and Honig, and further in view of
Fratt (US 2,529,148; issued Nov. 7, 1950).
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeLancey, Malmberg, and Honig, and further in view of
Potter (US 5,065,540; issued Nov. 19, 1991).
ISSUES
The following issues have been raised in this appeal:
1. Whether the Examiner erred in concluding that it would have
been obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg and Honig to result in the
trolling rod holder assembly comprising a tubular support member having a
lower end with "opposing channel cutouts lockingly engageable in said bore
formed in said gunwale of said fishing vessel," and a tubular rod holder
having a rocker arm "formed with a planar front face and an arcuate rear
Appeal 2010-001602
Application 11/045,980

4
face permitting pivot or rotation of said tubular rod holder from a horizontal
orientation to a vertical orientation," as recited in claim 1.
2. Whether the Examiner erred in concluding that it would have
been obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg, Honig, and Fratt to result
in the trolling rod holder assembly "wherein said tubular support member
has formed on the outer circumference thereof, a connecting ring," as recited
in claim 4.
3. Whether the Examiner erred in concluding that it would have
been obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg, Honig, and Potter to result in
the trolling rod holder assembly "wherein said tubular rod holder has a
polymeric sleeve inserted therein for engagement with a butt end of said
fishing rod," as recited in claim 7.
ANALYSIS
Rejection of claims 1, 8, and 9 as being unpatentable over DeLancey in view
of Malmberg and Honig
Delancey discloses a fishing rod holder including a tubular support
member 34, and a "tubular rod holder" (i.e., fishing rod receptacle 64) with a
"rocker arm" (i.e., flange 66). (Ans. 3; see also Delancey, col. 3, ll. 12-16
and 41-43; Fig. 1.) The Examiner found that Delancey does not disclose that
the lower end of the support member 34 has the claimed channel cutouts.
(Ans. 3; see also Delancey, col. 2, ll. 61-64; Fig. 1.) The Examiner relied on
Malmberg for disclosure of a fishing rod holder with "channel cutouts" (i.e.,
notches 52 which form teeth 54) on the lower end of the upstanding standard
50 mounted in the gunwale of a boat. (Ans. 3-4; see also Malmberg, col. 4,
Appeal 2010-001602
Application 11/045,980

5
ll. 13-22; Fig. 1.) The Examiner concluded that it would have been obvious
to provide Malmberg's channel cutouts on Delancey's support member to
employ Delancey's fishing rod holder in a gunwale. (Ans. 4.)
Appellant contends that Delancey's rod holder is designed to be
fixedly secured to a gunwale of a boat with the base plate (i.e., support base
14), and that removing the base plate from Delancey's apparatus still would
not allow it to be inserted into a bore formed in the gunwale of a boat
"because of the articulating apparatus and knob 54." (Br. 10-11). Appellant
also contends that it would not have been obvious to add the teeth of
Malmberg's apparatus to Delancey's base because adding teeth to the
underside of the base plate would only provide a more secure grip to the
upper surface of the gunwale.1 (Br. 11.) These contentions are not
persuasive.
The Examiner determined that one skilled in the art would insert
Delancey's support member 34, not also the locking knob 54, U-shaped
member 28, or support base 14, into a bore in a boat gunwale. (Ans. 7; see
Delancey, col. 3, ll. 3-5 and 26-28; Fig. 1.) Further, the Examiner's
modification adds channel cutouts to Delancey's support member 34, not to
the base plate. Malmberg's fishing rod holder is constructed to be
removably received in a bore in a gunwale 53 of a boat. (Malmberg, col. 4,

1 Appellant indicates that these contentions address the rejection of canceled
claim 3 under 35 U.S.C. § 103(a) over DeLancey and Malmberg. (Br. 11).
As the limitations of canceled claim 3 are contained in claim 1 on appeal, we
will treat Appellant's contentions as being made with respect to the
obviousness rejection of claim 1 over the combination of DeLancey,
Malmberg, and Honig.
Appeal 2010-001602
Application 11/045,980

6
ll. 13-21; Fig. 1.) While the base plate of DeLancey's apparatus can be
fixedly mounted to a surface in a boat, the Examiner articulated adequate
reasoning based on a rational underpinning to explain why one skilled in the
art would have been led to modify DeLancey's support member 34 by
adding teeth as disclosed by Malberg to the bottom surface of the support
member 34 (and not retaining the U-shaped member 28, locking knob 54,
and support base 14 on the support member 34). The Examiner explained
that this modification, which uses another known mounting arrangement for
support members of fishing rod holders used in boats, would allow
DeLancey's support member to be removably received in a tubular bore in a
gunwale of a boat. The resulting fishing rod holder could be used in this
manner, such as when fixed mounting of the apparatus is not available or
desired in a boat. The teeth added to DeLancey's support member 34 would
prevent it from rotating when mounted in the boat gunwale. (See Malmberg,
col. 4, ll. 21-23; Fig. 1.) Appellant has not shown that this modification of
DeLancey's apparatus would have been uniquely challenging to one skilled
in the art, and it appears to involve no more than "the simple substitution of
one known element for another" with predictable results. See KSR Int'l Co.
v. Telflex Inc., 550 U.S. 398, 417 (2007). Appellant's contention that
DeLancey and Malmberg teach away from the claimed rod holder assembly
also is not convincing. (Br. 15-17.) Hence, we agree with the Examiner that
the modification of DeLancey in view of Malmberg would have been
obvious.
Delancey's flange 66 has an arcuate face with teeth (i.e., rachet 68.)
(Ans. 4; see also Delancey, col. 3, ll. 40-43; Fig. 5.) Honig discloses a
fishing rod holder having a "rocker arm" (i.e., upper base element 13) with a
Appeal 2010-001602
Application 11/045,980

7
planar front face and an arcuate rear face (i.e., arcuate surface 29 with
pockets 30.) (Ans. 4; see also Honig, col. 2, ll. 29-35; Fig. 5.) The
Examiner concluded that it would have been obvious to provide the face of
Delancey's flange 66 with the rocker arm face of Honig as a mere
substitution of one equivalent mounting mechanism for another, with the
same function to permit rotation of the rod holder from a horizontal
orientation to a vertical orientation. (Ans. 4.)
Appellant contends that Honig's rocker arm is secured to the rod
support tube, not the vertical support tube, and substituting the gearing and
lock mechanism of DeLancey with a rocker arm would not allow DeLancey
to selectively pick the angle of the tubular rod support 64.2 (Br. 12.) We
disagree. Honig's fishing rod holder includes a latch pin 32 that is
selectively engageable with one of the pockets 30 to lock the socket element
14 in a selected position against pivotal movement, and is releasable from
the pocket 30 to allow the socket element 14 to be pivoted to another
position. (Honig, col. 2, ll. 35-58; Figs. 5 and 7.) We agree with the
Examiner that it would have been obvious to modify the face of Delancey's
flange 66 with the face of Honig's member 13 as a mere substitution of one
equivalent mounting mechanism used in a fishing rod holder for another.
This modification would still allow DeLancey's tubular rod support to be

2 Appellant indicates that these contentions addresses the rejection of
canceled claim 2 under 35 U.S.C. § 103(a) over DeLancey and Honig. (Br.
12). As the limitations of canceled claim 2 are contained in claim 1 on
appeal, we will treat Appellant's contentions as being made with respect to
the obviousness rejection of claim 1 over the combination of DeLancey,
Malmberg, and Honig.
Appeal 2010-001602
Application 11/045,980

8
rotated from a horizontal orientation to a vertical orientation, and to an
intermediate orientation. Hence, we sustain the obviousness rejection of
claim 1, as well as claims 8 and 9, which depend therefrom and are not
separately argued.
Rejection of claims 4-6 as being unpatentable over DeLancey, Malmberg,
Honig, and Fratt
The Examiner found that DeLancey does not disclose a connecting
ring formed on the outer surface of the tubular support member. (Ans. 5.)
The Examiner relied on Fratt for disclosure of a fishing rod holder including
a "connecting ring" (i.e., eye member 47) formed on an outer surface of the
tubular support 37 in which the tubular rod holder 44 is mounted. (Ans. 5;
see also Fratt, col. 3, ll. 29-34; Fig. 2.) The Examiner concluded that it
would have been obvious to modify the modified rod holder of Delancey by
mounting a connecting ring on the outer surface of the tubular support in
order to attach a safety line (i.e., string 48.) (Ans. 5; see also Fratt, col. 3, ll.
29-34; Fig. 2.)
Appellant's arguments appear to be directed solely to claim 4.
Appellant contends that Fratt discloses a surface mounted rod holder that is
not designed to be slidably receivable within a bore formed in the gunwale
of a boat, and adding Fratt's connecting ring to DeLancey still results in a
rod holder that is mounted to the upper surface of the gunwale of a boat.
(Br. 12.) These contentions are not persuasive. Firstly, we agree with the
Examiner that it would have been obvious to modify DeLancey's apparatus
in view of Malmberg to allow it to be slidably received in the bore of a
gunwale of a boat. We also agree with the Examiner that it would have been
obvious to modify DeLancey's apparatus by adding a connecting ring as
Appeal 2010-001602
Application 11/045,980

9
taught by Fratt to allow a safety line to be attached to DeLancey's support
member 34. The safety line would prevent the rod holder from being pulled
out of a gunwale, such as when a large fish is hooked using the fishing rod.
The Examiner's modification appears to be no more than a combination of
known elements according to known methods, which yields predictable
results. See KSR, 550 U.S. at 415-16. Hence, we sustain the obviousness
rejection of claim 4, as well as claims 5 and 6, which depend therefrom and
are not separately argued.
Rejection of claim 7 as being unpatentable over DeLancey, Malmberg,
Honig, and Potter
Claim 7 depends from claim 1. The Examiner found that Delancey
does not disclose the claimed polymeric sleeve. (Ans. 5-6.) The Examiner
relied on Potter for disclosure of a soft plastic liner 35 inserted inside of the
rod holder (i.e., rod holder tube 30) for engagement with the butt of a fishing
rod. (Ans. 5-6; see also Potter, col. 3, l. 63 – col. 4, l. 8; Fig. 10.) The
Examiner concluded that it would have been obvious to place a liner as
shown by Potter inside of the modified rod holder of Delancey to protect the
butt of the rod by absorbing shock between the rod butt and the fishing rod
holder. (Ans. 6.)
Appellant contends that Potter discloses inserting the plastic liner
35 into the bore in the gunwale of the boat, and that combining the plastic
liner 35 with DeLancey's apparatus still results in a rod holder fixedly
secured to the surface of the gunwale, not slidably receivable within the bore
of the gunwale. (Br. 13.) We disagree with these contentions. Firstly, we
agree with the Examiner that it would have been obvious to modify
DeLancey's apparatus in view of Malmberg to allow it to be slidably
Appeal 2010-001602
Application 11/045,980

10
received in the bore of a gunwale of a boat. We also agree with the
Examiner that it would have been obvious to place a liner inside of the
modified rod holder 64 of DeLancey in view of Potter. The liner would
reduce movement of the rod and protect it from damage when inserted in the
rod holder. The Examiner's modification appears to be no more than a
combination of known elements according to known methods, which yields
predictable results. Hence, we sustain the obviousness rejection of claim 7.
CONCLUSIONS
1. The Examiner did not err in concluding that it would have
been obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg and Honig to result in the
trolling rod holder comprising a tubular support member having a lower end
with "opposing channel cutouts lockingly engageable in said bore formed in
said gunwale of said fishing vessel," and a tubular rod holder having a
rocker arm "formed with a planar front face and an arcuate rear face
permitting pivot or rotation of said tubular rod holder from a horizontal
orientation to a vertical orientation," as recited in claim 1.
2. The Examiner did not err in concluding that it would have been
obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg, Honig, and Fratt to result in
the trolling rod holder assembly "wherein said tubular support member has
formed on the outer circumference thereof, a connecting ring," as recited in
claim 4.
3. The Examiner did not err in concluding that it would have
been obvious to a person skilled in the art to modify the fishing rod support
apparatus of DeLancey in view of Malmberg, Honig, and Potter to result in
Appeal 2010-001602
Application 11/045,980

11
the trolling rod holder assembly "wherein said tubular rod holder has a
polymeric sleeve inserted therein for engagement with a butt end of said
fishing rod," as recited in claim 7.
DECISION
The Examiner's rejections are each AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

JRG