Ex Parte Barbary

Board of Patent Appeals and Interferences

Sep 29, 2005

10249204 (B.P.A.I. Sep. 29, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte PATRICK BARBARY

Appeal No. 2005-0845
Application 10/249,204

ON BRIEF

Before PATE, McQUADE, and BAHR, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the rejections of claims 2, 4, 5, 7,
10 through 12, 21 through 23 and 25 through 29. The rejection of
claims 21 through 23 and 25 has been carried over from a final
rejection, and claims 2, 4, 5, 7, 10 through 12 and 26 through 29
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Application 10/249,204
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are newly rejected in the examiner’s answer. All other rejections
have been dropped by the examiner in the examiner’s answer.
The claimed invention is directed to a fishing lure which
when towed or retrieved through the water oscillates or swings at
the end of the fishing line and is made to dive into and raise
out of the water. The lure also has apertures at the rear end in
which air trapped in the lure bubbles out of the lure attracting
fish.
The claimed subject matter may be further understood with
reference to the appealed claims appended to appellant’s brief.
The reference of record relied upon by the examiner as
evidence of anticipation is:
Davis 4,881,340 Nov. 21, 1989
The Rejections
Claims 2, 4, 5, 7, 10 through 12, 21 through 23, 25 and 27
through 29 stand rejected under 35 U.S.C. § 102 as anticipated by
Davis.
Claim 26 stands rejected under 35 U.S.C. § 112, second
paragraph as indefinite.
For the full details of these rejections reference is made
to the examiner’s answer. For the full details of appellant’s
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Application 10/249,204
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arguments and response thereto reference is made to the brief and
the reply brief.
Opinion
We have carefully reviewed the rejections on appeal in light
of the arguments of the appellant and the examiner. As a result
of this review we have determined that claims 2, 4, 5, 7, 10
through 12, 21 through 23, 25, and 27 through 29 are not
anticipated by Davis. Furthermore, we affirm the section 112
rejection of claim 26. Our reasons follow.
At the outset we merely note that the appellant has wrongly
identified the quantum of proof needed to sustain an examiner’s
rejection. See Brief, page 7. While the Agency’s burden before
the Federal Circuit is substantial evidence, In re Lee, 277 F.3d
1338, 1342-43, 61 USPQ2d 1430, 1432 (Fed. Cir. 2002), an
examiner's burden of proving unpatentability when rejecting
claims in a patent application within the agency is by a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674,
226 USPQ 1, 3 (Fed. Cir. 1985). In order to satisfy this
standard, the evidence must demonstrate that a fact is more
likely than not. See Bosies v. Benedict, 27 F.3d 539, 541-42,
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Application 10/249,204
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30 USPQ2d 1862, 1864 (Fed. Cir. 1994) (the preponderance of the
evidence standard requires the finder of fact to believe that the
existence of a fact is more probable than its nonexistence).
We note that the appellant has acceded to the examiner’s
rejection of claim 26 under 35 U.S.C. § 112, second paragraph.
This rejection is affirmed.
The following comprise our findings of fact as to the scope
and content of the prior art. Davis discloses a fishing lure
that may be used in alternative configurations. Davis discloses
a first means 12 with interior channels or tubes 20. The first
means includes a second means forming a front opening to the
interior channels or tubes 20. Inasmuch as these tubes are
disclosed as extending the full length of the body, we infer that
these tubes also have openings (not shown) in the rear thereof.
These tubes 20 comprise a fourth means for providing the interior
channel in the first means. The openings at the rear of the
tubes (not shown) comprise a third means to allow water to be
forced through the openings when the lure is pulled through the
water. The first means also includes a fifth means C for pulling
the first means through the water. See Figure 6. Note that Davis
describes the release of air bubbles from the tubes 18 as the
lure is drawn through the water. Col. 2, lines 31-34. Thus, it
is our finding that Davis has similar structure to that called
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Application 10/249,204
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for in claim 29. However, there is no disclosure in Davis that
Davis rises into the ambient air in response to the pull on line
104 in combination with the drag force of the water on the body.
The examiner merely states that it does so with reference to
Figures 1-8 and columns 3 and 4. We find no specific mention of
this characteristic or capability of Davis in the disclosure
pointed out by the examiner. Indeed, in the Figures pointed to,
when they do show water, they show the lure of Davis entirely
submerged. If the examiner’s finding is based on inherency, the
examiner has failed to provide a reasonable explanation as to why
oscillating and submerging and rising is necessarily present in
Davis. Accordingly, it is our determination that the examiner
has not shown this function of the claimed subject matter is
present in Davis by a preponderance of the evidence. Both
independent claims 27 and 29 are directed to this feature.
Consequently, we reverse the rejections of these claims and the
claims dependent thereon.
Turning to claim 21, we are in agreement with appellant that
Davis cannot be said to have a longitudinal axis through said
front opening, said interior channel, and said rear opening of
said elongate body, with said rear opening also having a pattern
of apertures. While we understand the examiner’s argument on
page 10 of the answer, we note that the inferred rear opening of
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Application 10/249,204
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a single interior channel 20 does not have plural apertures as
required by claim 21. The rejection of claim 21 and the
dependent claims depending therefrom is reversed.
In Summary, the rejection of Claims 2, 4, 5, 7, 10 through
12, 21 through 23, 25 and 27 through 29 under 35 U.S.C. § 102 is
reversed. The rejection of claim 26 under 35 U.S.C. § 112,
second paragraph is affirmed.
AFFIRMED-IN-PART
WILLIAM F. PATE III )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
WFP/pgc
Appeal No. 2005-0845
Application 10/249,204
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Joel I. Rosenblatt
445 11th Avenue
Indialantic, FL 32903