Ex Parte ArcabascioDownload PDFBoard of Patent Appeals and InterferencesAug 26, 201111045980 (B.P.A.I. Aug. 26, 2011) Copy Citation 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). 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