Ex Parte Bartlett

Board of Patent Appeals and Interferences

Jan 30, 2004

09715684 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NORMAN WALTER BARTLETT
____________
Appeal No. 2003-1981
Application No. 09/715,684
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 3, 4
and 7 to 9, which are all of the claims pending in this application.
We AFFIRM-IN-PART and have denominated our affirmance of claim 1 to be a
new ground of rejection under 37 CFR § 1.196(b).
Appeal No. 2003-1981
Application No. 09/715,684
Page 2
BACKGROUND
The appellant's invention relates to fly fishing and, more particularly, to a fly
casting trainer and method of teaching fly casting to enable an instructor to impart a
muscle memory of the proper casting form to a trainee (specification, p. 1). A copy of
the dependent claims under appeal is set forth in the appendix to the appellant's brief.
The independent claims on appeal read as follows:
1. A fly cast training rod, comprising a flexible shaft attached to a pair of
spaced handles to allow a trainer and trainee to stand side-by-side with each
gripping one of said handles, whereby said trainee can follow said trainer in
order to get the feel and rhythm of proper casting technique.
3. A fly cast training device, comprising:
a fly rod having a flexible shaft section and a butt section adjoining said
flexible shaft section;
a spool attached to said fly rod;
a handle assembly for gripping said fly rod, said handle assembly
including a plurality of handles secured together at their distal ends in a spaced
relation.
7. A fly cast training device, comprising:
a flexible shaft section;
a butt section attached to said flexible shaft section;
a spool attached to said butt section;
a handle assembly between said butt section and said flexible shaft
section, said handle assembly including a plurality of handle sections secured
together at both ends in a spaced relation by a pair of brackets.
Appeal No. 2003-1981
Application No. 09/715,684
Page 3
1 Issued December 24, 1985.
2 Issued January 25, 2000.
Claims 1, 3, 4, 7 and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 4,559,7351 to Batick, Jr. (Batick).
Claims 1 and 7 to 9 stand rejected under 35 U.S.C. § 102(e) as being anticipated
by U.S. Patent No. 6,016,6212 to Maeda.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 15, mailed May 14, 2003) for the examiner's complete reasoning in support
of the rejections, and to the brief (Paper No. 14, filed March 27, 2003) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
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Application No. 09/715,684
Page 4
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
The teachings of Batick
Batick's invention relates to the sport of fishing and more particularly to an
apparatus mounted on a fishing rod in the vicinity of the fishing reel to facilitate holding
and manipulating the rod and reel by a handicapped person. This invention includes a
holding apparatus which can be attached to a fishing rod in generally juxtaposed
relationship with respect to the fishing reel such that a person can insert a hand through
resilient portions of the apparatus to effect a holding action for the rod. The positioning
of the hand in the holding apparatus aligns the thumb of the hand with manipulative
portions of the reel, such as the brake button on the rear of a spin cast type reel. A
Appeal No. 2003-1981
Application No. 09/715,684
Page 5
person with a muscular disorder in the arm and hand is able to insert his hand between
the resilient portions of the apparatus so as to hold the rod with or without wrapping the
hand around the rod, thereby making it possible to control the rod with the one hand
while the other hand is used to crank the handle for retrieving the line, the bait and any
fish that may have been caught. The holding apparatus makes it possible for the user
to cast a bait manipulating the brake button during the cast. In this way it is possible to
hold the fishing rod and reel, cast the bait using the rod and reel and retrieve the bait,
even with severely handicapped hands and arms.
Figures 1 and 2 depict a fishing rod 11 and reel 12 with the holding apparatus 30
of Batick's invention secured thereto. The fishing rod 11 (only one end of which is
shown) includes a handle 10 to which is removably attached the fishing reel 12 with a
fishing line 14 extending from a line guide 16 at the front of the reel. The fishing line 14
extends along the length of the rod through eyelets or line guides and has attached at
the end of the line appropriate hooks, bobbers and sinkers (not shown). The fishing
reel 12 has a body portion 18 with a rotatable handle 20 operatively associated with the
parts of the reel for winding the line onto a spool (not shown) carried on the body
portion of the reel and shielded by a tapered front cover 22. A rear cover 24 is attached
to the body portion 18 and has an exposed rearwardly facing thumb button 26 pivotally
affixed thereto and extending rearwardly from the rear cover 24. In normal use, by
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Application No. 09/715,684
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depressing the thumb button 26 the line 14 is braked or held against the inside of the
front cover and is prevented from exiting the reel so that the reel and rod can be swung
in an arc from in front of the fisherman to behind the fisherman and then as the rod is
swung forward, the thumb button is released, whereupon the hook and bait on the end
of the line will pull the line from the reel until the hook and bait drops gently into the
water. At this point, the crank handle 20 can be rotated to retrieve the line and hook
and hopefully a fish caught thereon.
Batick teaches (column 2, line 37, to column 3, line 25) that:
A handicapped person, and in particular a person that has nerve or
muscle disorder or damage in the arm and hand, is not able to grip the handle 10
on the rod 11 to hold same during casting, during the wait for a fish to nibble or
bite, and during retrieve of the line.
The improvement is directed to a holding apparatus 30 which can be
removably attached to the handle 10 of a rod in juxtaposed relationship to the
reel which facilitates holding the rod 11 and manipulating the reel 12 by a
handicapped person. Specifically, the holding apparatus includes a frame 40
which is composed of a pair of spaced apart side walls 42 and 44 and a pair of
spaced apart end rods 46 and 48 extending between the side walls. The side
walls 42,44 lie parallel to each and parallel to the handle 10 of the rod. The end
rods 46,48 are threaded at 47 and 49, respectively, into opposite end portions of
side wall 42. The rods 46,48 pass through apertures 50 in the opposite end
portions of the side wall 44 so that the wall 44 can be moved along the axes of
the rods 46 and 48 toward and away from the wall 42. A pair of identical
compression springs 52 are mounted between the walls 42 and 44 with each
spring surrounding one of the rods 46 or 48, with the springs 52 urging the wall
44 away from the wall 42. The rods 46 and 48 are rigidly secured to cylindrical
expandable connectors or clamps 54 and 56 and projects radially from said
cylindrical connectors or clamps. The cylindrical connectors 54,56 are
substantially identical and are composed of a circular band of material 55, such
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Application No. 09/715,684
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as metal or the like, and have radially directed flanges 57 on each end thereof,
with the flanges 57 lying parallel to each other. A screw fastener 59, such as a
screw with a wing nut on the head thereof, extends through one of the flanges
and is threaded into a threaded aperture in the other of the flanges so that as the
screw is tightened, the flanges will be drawn together. To adjust the spacing
between the walls 42,44, a pair of adjusting screws 60 and 62 pass freely
through apertures 61 in the side wall 42 and have the distal end portions 64,66
threaded into threaded apertures 65 in the side wall 44. An actuating knob 68 is
formed on each adjusting screw 60 and 62 and has a knurled peripheral surface
facing radially outward therefrom to facilitate turning the adjusting screws to
move the wall 44 farther from or closer to the wall 42 as desired.
Attached to the facing surfaces of the side walls 42 and 44 are resilient
pads 70,72, respectively, which abut each other along a parting line 74 in the
midportion of the space between the walls 42 and 44. The pad 70 is secured to
the facing surface 76 of the side wall 42 with pad 72 secured to the facing
surface 78 of the side wall 44. The pads 70 and 72 may be formed of any one of
a large number of resilient sponge-like material, such as polyurethane foam or
the like. The adjusting screws 60 and 62 are manipulated to compression load
the pads 70,72 to a degree desired by the fisherman.
The teachings of Maeda
Maeda's invention relates to a fishing rod which makes it possible to sensitively
detect a delicate strike using the reel, and which is convenient for storage,
transportation and easiness for practical use, and which is particularly suitable for
fishing on board a ship. Figures 3-4 depict one exemplary fishing rod comprising a grip
handle 2 provided with a reel pedestal fixing device 1 on the upper side thereof. A reel
6' is mounted on the reel pedestal fixing device 1 on the upper side of the grip handle 2.
A fishing-line-guiding ring 5' is inclined to the side of the grip handle 2 with respect to
the direction at right angles to the lengthwise direction of the fishing rod. Five
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Application No. 09/715,684
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fishing-line-guiding rings 5 are fixedly secured to the lower surface of a fishing rod
member 3. A space 51 is formed by two parallel rods 50a, 50b which are spaced apart
by a predetermined width, and whose one ends are connected with and fixedly secured
to one end of the grip handle 2, and whose other ends are connected with and fixedly
secured to one end of the fishing rod member 3. A fishing line 4 extends from the reel
6' through the space 51 and the fishing-line-guiding rings 5', 5 secured to the lower
surface of the fishing rod member 3. The fishing line 4 is moved through the space 51
formed in the intermediary axially central part of the fishing rod so as to prevent the
fishing line 4 from contacting the fishing rod body.
The rejections under appeal
In the rejection under 35 U.S.C. § 102(b) before us in this appeal, the examiner
concluded that the claimed handles or handle sections were readable on Batick's side
walls 42 and 44. In the rejection under 35 U.S.C. § 102(e) before us in this appeal, the
examiner concluded that the claimed handles or handle sections were readable on
Maeda's rods 50a and 50b. The appellant argues that the claimed subject matter as
set forth in the independent claims under appeal is not readable on either Batick's
fishing rod or Maeda's fishing rod. For the reasons which follow, it is our view that
independent claims 1 and 7 are readable on Batick's fishing rod but not on Maeda's
fishing rod and that independent claim 3 is not readable on Batick's fishing rod.
Appeal No. 2003-1981
Application No. 09/715,684
Page 9
The American Heritage® Dictionary of the English Language, Third Edition 1992
by Houghton Mifflin Company (1992) defines the noun handle as "[a] part that is
designed to be held or operated with the hand." In our view, this is the broadest
reasonable meaning of the noun handle in its ordinary usage as it would be understood
by one of ordinary skill in the art taking into account the written description contained in
the appellant's specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). See also In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983).
With this definition of handle, it is our determination that the claimed handles or
handle sections are not readable on Maeda's rods 50a and 50b since Maeda's rods 50a
and 50b are not designed to be held or operated with the hand. Maeda's fishing rod
has a handle 2 and rods 50a and 50b do not constitute handles or handle sections
since a fisherman would not inherently be able to place their fingers in the space 51
between the rods. In that regard, the examiner's assertion (answer, pp. 7-8) to the
contrary is not supported by the disclosure of Maeda. It is well settled that the burden
of establishing a prima facie case of anticipation resides with the Patent and Trademark
Office (PTO). See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). When relying upon the theory of inherency, the examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination that the
Appeal No. 2003-1981
Application No. 09/715,684
Page 10
allegedly inherent characteristic necessarily flows from the teachings of the applied
prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
This the examiner has not done. Accordingly, the decision of the examiner to reject
claims 1 and 7 to 9 under 35 U.S.C. § 102(e) as being anticipated by Maeda is
reversed.
With the above-noted definition of handle, it is our determination that the claimed
handles are not readable on Batick's side walls 42 and 44 since Batick's side walls 42
and 44 are not designed to be held or operated with the hand. However, Batick's side
walls 42 and 44 are part of holding apparatus 30 which is designed to be held or
operated with the hand (i.e., one of the claimed handles). Moreover, it is our opinion
that the handles as set forth in claim 1 are readable on Batick's handle 10 and holding
apparatus 30.
Claim 1 is readable on Batick as follows: A fly cast training rod, comprising a
flexible shaft (Batick's fishing rod 11) attached to a pair of spaced handles (Batick's
handle 10 and holding apparatus 30) to allow a trainer and trainee to stand side-by-side
with each gripping one of said handles, whereby said trainee can follow said trainer in
order to get the feel and rhythm of proper casting technique (Batick's handle 10 and
Appeal No. 2003-1981
Application No. 09/715,684
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holding apparatus 30 inherently allows a trainer and trainee to stand side-by-side with
one gripping the handle 10 and the other gripping the holding apparatus 30, whereby
the trainee can follow the trainer in order to get the feel and rhythm of proper casting
technique).
Claim 7 is readable on Batick as follows: A fly cast training device, comprising: a
flexible shaft section (Batick's fishing rod 11); a butt section (Batick's handle 10)
attached to said flexible shaft section; a spool (Batick's fishing reel 12) attached to said
butt section; a handle assembly (Batick's holding apparatus 30) between said butt
section and said flexible shaft section, said handle assembly including a plurality of
handle sections (Batick's side walls 42 and 44 while not handles are sections of the
handle assembly) secured together at both ends in a spaced relation by a pair of
brackets (Batick's rods 46 and 48 and/or adjusting screw 60 and 62).
The appellant's argument that claims 1 and 7 clearly distinguish over Batick is
unpersuasive since claims 1 and 7 are met by Batick as set forth above.
The appellant's argument that claim 3 clearly distinguishes over Batick is
persuasive since Batick's handle 10 and holding apparatus 30 are not secured together
at their distal ends in a spaced relation. All disclosed embodiments of the appellant's
Appeal No. 2003-1981
Application No. 09/715,684
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3 The appellant has grouped claims 7 and 8 as standing or falling together (brief, p. 4). Thereby,
in accordance with 37 CFR § 1.192(c)(7), claim 8 falls with claim 7.
invention except for the embodiment disclosed in Figures 5-6 clearly depict a handle
assembly including a plurality of handles secured together at their distal ends in a
spaced relation. The embodiment of Figures 5-6 portrays a training handle connected
to the periphery of a handle of a conventional fly rod. The training handle and the
handle of the conventional fly rod while spaced apart are not secured together at their
distal ends in a spaced relation. Batick's holding apparatus 30 is secured to the
periphery of handle 10 by clamps so that the holding apparatus 30 is spaced from the
handle 10. Batick's holding apparatus 30 is not secured to the distal end of handle 10
and therefore, Batick's handle 10 and holding apparatus 30 are not secured together at
their distal ends in a spaced relation.
For the reasons set forth above, the decision of the examiner to reject claims 1,
3, 4, 7 and 8 under 35 U.S.C. § 102(b) as being anticipated by Batick is affirmed with
respect to claims 1, 7 and 8 3 and reversed with respect to claims 3 and 4. Inasmuch
as the basic thrust of our affirmance of the 35 U.S.C. § 102(b) rejection of claim 1
differs from the rationale advanced by the examiner for the rejection, we hereby
designate the affirmance to be a new ground of rejection pursuant to 37 CFR § 1.196(b)
Appeal No. 2003-1981
Application No. 09/715,684
Page 13
to allow the appellant a fair opportunity to react thereto (see In re Kronig, 539 F.2d
1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976)).
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 3, 4, 7 and 8
under 35 U.S.C. § 102(b) as being anticipated by Batick is affirmed with respect to
claims 1, 7 and 8 and reversed with respect to claims 3 and 4 and the decision of the
examiner to reject claims 1 and 7 to 9 under 35 U.S.C. § 102(e) as being anticipated by
Maeda is reversed.
In addition to affirming the examiner's rejection of one or more claims, we have
denominated our affirmance of claim 1 a new ground of rejection under 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides, "[a] new ground of rejection shall not be
considered final for purposes of judicial review."

Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within two
months from the date of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
Appeal No. 2003-1981
Application No. 09/715,684
Page 14
with respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
a showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the Primary Examiner
pursuant to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under
35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner unless,
as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in
allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing thereof.
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Application No. 09/715,684
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-1981
Application No. 09/715,684
Page 16
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