Ex Parte Beer et alDownload PDFPatent Trial and Appeal BoardJun 6, 201311055371 (P.T.A.B. Jun. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte STEVEN R. BEER and JON W. NINNEMANN ________________ Appeal 2011-004794 Application 11/055,371 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and CARL M. DeFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004794 Application 11/055,371 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1, 2, 6, 8, 10-16, 20-29 and 31-34. App. Br. 5. Claims 3- 5, 7, 9, 17-19 and 30 have been canceled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a fishing lure.” Spec. para. [0001]. Independent claim 1 is illustrative of the claims on appeal 1 and is reproduced below: 1. A device for catching fish, comprising: a fishing tackle component having a main body having an outer surface, the outer surface having a first curved portion and a second curved portion, the first curved portion of the outer surface having a first radius of curvature, and the second curved portion of the outer surface provided within the first curved portion of the outer surface, usable to receive a rattle mechanism and having a second radius of curvature that is different than the first radius of curvature; and a rattle mechanism distinct from the main body and comprising a rattle chamber and first and second ends; wherein: at least the rattle chamber is mounted to the outer surface of the main body using the second curved portion of the outer surface of the main body of the fishing tackle component; and one or more rattle elements are contained in the rattle chamber. 1 The claims attached to Appellants’ Appeal Brief are not the most current. This is evident by both the Examiner’s statements and Appellants’ arguments. The most current claims are those submitted by Appellants on Sep. 23, 2009 in response to a non-final rejection. We address Appellants’ most current claims. Appeal 2011-004794 Application 11/055,371 3 REFERENCES RELIED ON BY THE EXAMINER Sacharnoski US 4,203,246 May 20, 1980 Dubois US 4,930,247 Jun. 5, 1990 Takashi 2 JP 09163898 Jun. 24, 1997 THE REJECTIONS ON APPEAL 1. Claims 33 and 34 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3. 2. Claims 1, 2, 6, 10-16, 24-29, 31 and 32 are rejected under 35 U.S.C. § 102(b) as being anticipated by Takashi. Ans. 4. 3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Takashi and Sacharnoski. Ans. 8. 4. Claims 20-23, 33 and 34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Takashi and Dubois. Ans. 8. ANALYSIS The rejection of claims 33 and 34 as failing to comply with the written description requirement Claims 33 and 34 (added by amendment dated Sep. 23, 2009) are written in terms of what they lack or do not encompass. Claim 33 includes the limitation “wherein no portion of the rattle chamber is located within an interior of the main body nor adjacent to an interior surface of the main body.” Claim 34 includes the limitation “wherein the main body does not have an internal region or surface usable to mount the rattle chamber to the 2 This document is referred to by many different names, including “JP Pat. No. 9-163898,” “the Japanese reference,” “the Japanese patent” and “Kitayama.” We will refer to it as “Takashi” as do Appellants. Also, reference to this document is to the English Language translation provided by FLS, Inc. dated April 2009. Appeal 2011-004794 Application 11/055,371 4 main body.” The Examiner finds that these negative claim limitations are not sufficiently described such that one skilled in the art would understand that Appellants had possession thereof. Ans. 3-4. More specifically, the Examiner finds that Appellants’ figures 4-7 show just the opposite in that the item “is located within an interior of the main body,” “is near an interior surface of the main body,” and “is mounted in an internal region or surface . . . interior to the main body surface.” Ans. 3-4, 10. Appellants contend that “the Examiner has misinterpreted the teachings in the Specification” in that figures 4-7, in fact, “show a rattle chamber mounted to an external surface of a spoon. That is, Figs. 4-7 show a rattle chamber mounted to an external surface of the main body of a fishing tackle component” (italics added). 3 App. Br. 29. Appellants contend that “even assuming, arguendo, that the Examiner is correct . . . it would not preclude another embodiment wherein no part of the rattle chamber is mounted in an interior of the main body nor adjacent an interior surface, or an embodiment wherein the main body has no such suitable internal region or surface.” App. Br. 29. Appellants support their contentions by asserting that the “Specification expressly supports embodiments having rattle chambers mounted only to external surfaces an[d] having no internal surfaces” (italics added). App. Br. 29-30. We understand Appellants’ contention to be that the positive disclosure and illustration of “only” certain features (here ‘X’) shows that Appellants also had possession 3 It is unclear from Appellants’ contention whether the asserted external surface is solely the top surface of item 110 as argued and illustrated in Figs. 4-7 or whether Appellants’ reference to an external surface also extends to the bottom surface of item 110 as described in Appellants’ Specification paragraph [0043] amended on May 18, 2009 and illustrated in Fig. 10. Appeal 2011-004794 Application 11/055,371 5 of ‘not-X’ at the time of the invention sufficient enough to claim ‘not-X,’ as in claims 33 and 34. In essence, Appellants contend that a written description of a claim limitation can be supported by the lack of an explicit description of that limitation in the Specification. To satisfy the written description requirement, the disclosure must convey with reasonable clarity to skilled artisans that Appellants were in possession of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into whether the description requirement is met is a question of fact. In re Wertheim, 541 F.2d 257, 262, (CCPA 1976). Although examples are not always required to satisfy the written description requirement, the lack of any disclosure of examples may be considered when determining whether the claimed invention is adequately described. Boston Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353, 1364 (Fed. Cir. 2011). Further, our reviewing court has provided instruction that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). This guiding principal is applicable here in assuring that Appellants have reasonably conveyed possession of the claimed subject matter to one skilled in the art. In the matter before us, Appellants do not identify where the Specification states, recites or describes these ‘not-X’ claim limitations other than that the Specification clearly teaches “X”. Reply Br. 7-10. Without Appeal 2011-004794 Application 11/055,371 6 more, and without any indication in the Specification where there is a discussion directed to these limitations, Appellants do not persuade us that they have conveyed with reasonable clarity that they were in possession of the limitations of claims 33 and 34 as of the filing date. Accordingly, and based on the record presented, we agree with the Examiner that claims 33 and 34 “contain[] subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.” Ans. 3. We sustain the Examiner’s rejection of claims 33 and 34 as failing to comply with the written description requirement. The rejection of claims 1, 2, 6, 10-16, 24-29, 31 and 32 as being anticipated by Takashi Appellants do not argue these claims together but instead provide separate arguments for different claim groupings. We address each such grouping under a separate heading below. Claims 1 and 24 In rejecting claim 1, the Examiner relies on Takashi as disclosing an “outer surface having a first curved portion - at 60, and a second curved portion- proximate 60a.” Ans. 4. The Examiner further finds that second curved portion 60a is “within the first curved portion” 60 as claimed and also that second portion 60a “is part of the outer surface of the main body.” Ans. 4. The Examiner sometimes employs reference numeral 60 as “the first curved portion” and sometimes as “a fishing tackle component” or “main body” which presumably arises due to the fact that Takashi provides this Appeal 2011-004794 Application 11/055,371 7 item 60 with only a single reference numeral (other than its mouth 60a). Takashi Fig. 21 and para. [0024]. Appellants contend that the Examiner is correlating the claimed “second curved portion” with “the interior surface” of 60. App. Br. 11-14. The Examiner clarifies that reference to the claimed “second curved portion” is to “the front lip/rim proximate item 60a.” Ans. 10. As such, we are not persuaded by Appellants’ contentions relying on the hollow interior curved surface, and not the “front lip/rim,” which was identified by the Examiner as the “second curved portion.” See App. Br. 11, 13. Claim 1 also includes the limitation that the second curved portion (60a) of the outer surface 4 is “provided within the first curved portion [60] of the outer surface.” Appellants address the claim term “within” and, while this term is not expressly defined in Appellants’ Specification, Appellants contend that “when properly construed in view of the present application, [the term ‘within’] refers to discontinuous alterations of a surface akin to a dent ‘within’ a door panel of a car.” App. Br. 14. Appellants’ proffered definition is more restrictive than the ordinary and customary meaning of “within” which is “in or into the interior.” 5 The scope of this dictionary definition is not inconsistent with Appellants’ Specification, especially in light of Appellants’ claim amendment on Sep. 23, 2009 that altered the previous term “in” to now read “within.” Appellants’ contentions regarding the claim term “within” are not persuasive. App. Br. 13-14. Further, because Takashi clearly discloses tube 60 having a mouth 60a that permits access to the tube’s interior (Takashi para. [0024] and Fig. 21), we are not 4 The “outer surface” is recited as “having a first curved portion and a second curved portion.” 5 See Webster’s New Collegiate Dictionary (1979), at pg. 1337. Appeal 2011-004794 Application 11/055,371 8 persuaded of Examiner error in finding that Takashi’s corresponding second curved portion (60a) is “usable to receive a rattle mechanism” as claimed. Appellants also contend that Takashi discloses the corresponding rattle mechanism (61-63) “as mounted to an inner surface of the soft tube 60” and that this fails to teach that “the rattle mechanism is mounted to the outer surface of the main body” as claimed. Reply Br. 14. We note that the Examiner has identified mouth 60a (second curved portion) as being part of the outer surface. Ans. 4. We further note that Takashi discloses inserting the rattle mechanism “from the mouth 60a of the squid shaped soft tube 60” but that the mechanism is not fully inserted therein so that external threads 61a and 63a can be inserted within “the female screw opening of the squid shaped head 64.” Takashi para. [0024] and Fig. 21. There is no claim recitation that the whole of the rattle mechanism is to be mounted to the outer surface, and Appellants do not persuade us that mouth/lip/rim 60a is not part of the outer surface of Takashi’s main body as the Examiner finds. Reply Br. 18, Ans. 4, 10. There is also no requirement that the rattle mechanism be mounted directly to the first curved portion, instead, claim 1 simply requires that the “rattle mechanism is mounted to the outer surface of the main body,” and Appellants fail to persuade us that Takashi’s mechanism is not mounted to the outer surface via 60a as found by the Examiner. Ans. 5. Accordingly, we are not persuaded the Examiner has adopted “an unreasonable construction of the claim terms” (Reply Br. 14-15, see also App. Br. 13). As such, and based on the record presented, we sustain the Examiner’s rejection of claim 1. Appeal 2011-004794 Application 11/055,371 9 Claim 24 depends from claim 1 and includes the limitation that “the second radius of curvature is smaller than the first radius of curvature.” Appellants dispute this rejection by asserting that “the Examiner has unreasonably interpreted the scope of the second portion of the exterior surface” and relies on the Examiner’s finding that the second curved portion is “an interior surface.” App. Br. 14. However, as discussed above, this is not a correct understanding of the Examiner’s findings regarding the corresponding second curved portion. Accordingly, we sustain the Examiner’s rejection of claim 24. Claims 13 and 25 Claim 13 is an independent method claim that tracks the limitations of claim 1 discussed supra. Appellants again rely on the “internal space of the lure” as corresponding with the Examiner’s finding of a second curved portion. App. Br. 15. This contention is not persuasive for the reasons previously stated. Appellants also reiterate that Takashi’s rattle mechanism is “installed within an interior of a fishing lure . . . rather than mounted to an exterior surface of the lure.” App. Br. 15-16. This contention is not persuasive for reasons also discussed above. Appellants’ Reply Brief repeats other assertions previously addressed with respect to claim 1, none of which are found persuasive. Reply Br. 18. Accordingly, the rejection of claim 13 is sustained. Claim 25 depends from claim 13 and is similar in scope to that of claim 24 discussed supra. Appellants do not address the additional limitation cited but instead contend that due to arguments previously asserted “it is irrelevant whether the radius of curvature of that interior is larger or smaller in comparison to the first portion.” App. Br. 16. Appeal 2011-004794 Application 11/055,371 10 Appellants’ arguments are not persuasive and accordingly, we sustain the Examiner’s rejection of claim 25. Claims 2, 6 and 31 Claims 2 and 6 both depend directly from claim 1. Claim 2 is directed to an “in-line tackle component” while claim 6 is directed to “a terminal component.” The Examiner finds these limitations as disclosed in Takashi’s figure 21. Ans. 5. Appellants contend that figure 21 “shows a single fishing lure” and that “[t]hat fishing lure cannot be both an in-line tackle component and a terminal tackle component.” App. Br. 17. Appellants do not otherwise indicate why this is the case or explain how the logic that allows Appellants’ single lure to be used as both an in-line and a terminal lure is not likewise applicable to Takashi’s single lure thereby allowing it to also be both an in-line and a terminal lure. Appellants also do not address the two eye loops illustrated in Takashi’s figure 21, one at the smaller end of item 64 and another at an opposite side of the lure at one end of pieces 62. Appellants’ contention is not persuasive and accordingly, we sustain the rejection of claims 2 and 6. Method claim 31 depends from claim 13 and includes the additional step that providing a second curved portion “comprises deforming a portion of the first curved portion of the main body of the outer surface of the fishing tackle component.” The Examiner references Takashi’s figure 21 finding that “the main body - at 60 is made of soft material and therefore is deformed during making of the lure.” Ans. 7, see also Ans. 11 for the finding that “the forces acting upon the lure during manufacture cause at least some deformation.” Appellants disagree and contend that “such a lure would not necessarily be deformed during production let alone deformed in Appeal 2011-004794 Application 11/055,371 11 a manner to provide the claimed second portion” and further that Takashi’s “‘soft material’ may be pliable, but may not necessarily be deformed at any point during manufacture.” App. Br. 17. Appellants submit “that the Examiner has failed to support his assertion with any indication of where the reference teaches the material used to make, or a deformation performed on, the fishing lure.” App. Br. 17-18. We agree with Appellants. Our reviewing court has provided instruction that “[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. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, the Examiner does not identify where Takashi expressly describes “deforming a portion of the first curved portion” when providing the second curved portion as claimed. The Examiner also does not identify where Takashi discloses a particular method of manufacture of main body 60 and as such provides no basis for the apparently inherent finding that “at least some deformation” occurs during manufacture. Ans. 11, see also 7. Accordingly, we are not persuaded the Examiner has established by a preponderance of the evidence that Takashi anticipates the claimed method. We reverse the Examiner’s rejection of claim 31. Claims 10-12 and 14-16 Each of dependent claims 10-12, 14 and 15 includes the additional limitation of a “depression or a slot formed in the first curved portion.” The Examiner instructs Appellants to see Takashi’s figure 21 and particularly “the front of item 60 at item 60a” for this limitation. Ans. 11, see also 5, 6. Appellants contend that the Examiner has failed to show “where in Figure Appeal 2011-004794 Application 11/055,371 12 21 [Takashi] is asserted to teach such a depression” and that Takashi discloses a tube-like body such that “[n]o reasonable interpretation of the terms depression or slot would include such a tube-shaped wrap.” App. Br. 18. We agree with Appellants. Our reviewing court has provided instruction that the PTO fails to carry its procedural burden of establishing a prima facie rejection when the rejection is so “uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Here, the Examiner does not indicate where the front of Takashi’s item 60 at item 60a discloses where one might detect a depression or a slot as claimed. This omission suggests Appellants were not afforded a fair opportunity to react to the thrust of the Examiner’s rejection. Jung, 637 F. 3d at 1365 (“It is well-established that the Board is free to affirm an examiner's rejection so long as “appellants have had a fair opportunity to react to the thrust of the rejection.”) (citing In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976)). Here, due to the vagueness of the Examiner’s findings, we reverse the Examiner’s rejection of claims 10-12, 14 and 15. Claim 16 depends directed from claim 13 and includes the additional limitation that “a long axis of the second curved surface is provided along a center line of the fishing tackle component.” The Examiner finds that this additional limitation is disclosed in Takashi’s figure 21. Ans. 6. Appellants do not dispute this finding and also acknowledge that Takashi discloses a “tube-like body that encircles a rattle chamber,” i.e., has a long axis. App. Br. 18. As Appellants do not present arguments disputing the Examiner’s rejection of the additional limitation of claim 16, we sustain this rejection. Appeal 2011-004794 Application 11/055,371 13 Claims 26 and 29 Claim 26 depends from claim 1 and includes the limitation that the first curved portion is “convex” while the second curved portion is “concave.” Claim 29 depends from claim 13 and is similar in that a concave portion is provided within a convex portion of the outer surface. Appellants do not dispute the Examiner’s finding regarding the “convex” portion but Appellants contend that the Examiner does not show where Takashi’s figure 21 “shows a concave second portion of the outer surface.” App. Br. 19. While we agree with the Examiner’s finding that Takashi’s first curved portion (60) is illustrated as being convex, we are not persuaded that Takashi’s “second curved portion [60a] comprises a concave portion of the outer surface.” Ans. 6. The Examiner does not explain how Takashi’s mouth/lip/rim 60a can reasonably be deemed to be concave. Accordingly, we are not persuaded the Examiner has provided a sufficient prima facie case of anticipation and as such, has failed to establish anticipation by a preponderance of the evidence. We reverse the Examiner’s rejection of claims 26 and 29. Claims 27 and 28 Claim 27 depends from claim 1 and includes the limitation that the first and second curved portions are “concave.” Claim 28 depends from claim 13 and is similar in that there are first and second “concave” portions. For disclosure of the concave feature of the first curved portion, the Examiner relies on the “bottom of 60,” and for the disclosure of the concave feature of the second curved portion, the Examiner relies on the same (faulty) analysis as discussed above with respect to claims 26 and 29. Ans. 6-7. Appellants dispute the Examiner’s finding regarding reference to “the Appeal 2011-004794 Application 11/055,371 14 ‘bottom’ of element 60” as disclosing a concave first curved portion, and further, Appellants dispute the Examiner’s findings that Takashi’s corresponding second curved portion is concave as discussed above. App. Br. 20. We agree with Appellants on both counts. We agree with Appellants’ former contention regarding the first curved portion because the Examiner is now directing attention to the “bottom” of 60 when the Examiner earlier directed attention to the top or outer surface of 60 when discussing the first curved portion of the respective parent claims. The Examiner is not being consistent as to the surface relied upon. We likewise agree with Appellants’ latter contention regarding the second curved portion for the reasons stated above. Accordingly, we reverse the Examiner’s rejection of claims 27 and 28. In summary, we sustain the Examiner’s rejection of claims 1, 2, 6, 13, 16, 24, 25 and 31 and we reverse the Examiner’s rejection of claims 10-12, 14, 15 and 26-29. We note that while the Examiner also rejected claim 32 as being anticipated by Takashi (Ans. 4), Appellants presented no arguments with respect to that claim. Accordingly, we also sustain the rejection of claim 32. The rejection of claim 8 as being unpatentable over Takashi and Sacharnoski Claim 8 depends from claim 1 and includes the further limitation that “the rattle chamber has a maximum curvature that is less than a minimum curvature of the rattle elements” (italics added). The Examiner relies on the additional teachings of Sacharnoski for this limitation and particularly rattle chamber 12 and end portions 16 that contain rattle elements 14. Ans. 8 (referencing Sacharnoski Fig. 1). The Examiner concludes that it would Appeal 2011-004794 Application 11/055,371 15 have been obvious to “add the rattle chamber of Sacharnoski [to Takashi], so as to allow for the movement of the rattle elements in the chamber to be controlled during use.” Ans. 8. Appellants’ Specification states that “[g]enerally, curvature can be defined as the amount by which a geometric object deviates from being flat” and that “in the case of a sphere, for example, the larger the curvature of the sphere is, the smaller the diameter of the sphere will be.” Spec. para. [0033]. Appellants discuss curvature in relation to insuring that the rattle elements can freely move and not get stuck or wedged inside their housing. Spec. paras. [0031]-[0033]. In essence, a housing having a curvature greater than that of the rattle elements is likely to cause the rattle element to become lodged and not move. Spec. paras. [0031]- [0033]. Appellants apply this need for the chamber to have less curvature than that of the rattle elements to avoid lodging or wedging issues and contend that because Sacharnoski’s “rattle chamber comes to a sharp point, at that point it deviates from a straight line to a greater extent than the rattle elements and thus has a greater curvature than the rattle elements” and not less curvature as claimed. App. Br. 23. Hence, by this logic, presumably Sacharnoski’s rattle elements would become wedged or lodged at this point and hence inoperable. Appellants do not address the express contrary teachings of Sacharnoski which are clearly directed to devising a chamber so that “the spherical balls or shot 14 are relatively free for individual movement relative to each other and for collective and singular movement with respect to the inner surfaces of the closure walls of the tubular capsule 12.” Sacharnoski 3:1-5. Hence, both Appellants’ invention and Sacharnoski’s fishing lure are directed to encouraging movement of the rattle elements within their Appeal 2011-004794 Application 11/055,371 16 respective chambers, not the discouragement of such movement. Regarding Sacharnoski’s disclosure of a sharp point (App. Br. 23), Appellants do not explain how Sacharnoski’s considerably larger rattle elements 14 might possibly become wedged or lodged within such a small point. See Sacharnoski Fig. 1 and end 16. Accordingly, Appellants’ contention is not persuasive and we sustain the Examiner’s rejection of claim 8. The rejection of claims 20-23, 33 and 34 as being unpatentable over Takashi and Dubois Appellants present arguments for claims 20-23 separate from those presented for claims 33 and 34. We address each grouping separately. Claims 20-23 Claims 20-22 depend directly or indirectly from claim 1 while claim 23 depends from claim 13. In either case, each claim includes the additional limitation that the fishing tackle component is “formed of a thin strip of material” (claims 20-22) or comprises “a generally sheet-like fishing tackle component” (claim 23). The Examiner additionally relies on Dubois for disclosing a fishing tackle component (10) “made of a thin strip of sheet metal” (14). Ans. 8-9 (referencing Dubois 1:59-68). The Examiner concludes that it would have been obvious to “add the thin sheet metal material of Dubois [to Takashi], so as to allow for the device to be made more attractive to fish.” Ans. 9. The Examiner also finds that Takashi discloses that “the main body of the fishing lure is made of material having a thin/small thickness” and that “making the thin thickness [of Takashi] out of a thin strip, sheet or sheet metal material as that of the Dubois reference US 4,930,247 would have been obvious.” Ans. 12. This is because the use of Appeal 2011-004794 Application 11/055,371 17 suitable thin material would have yielded “the predictable result of making the device flexible/lightweight while also making the device durable for repeated usage.” Ans. 12. Appellants dispute the Examiner’s findings and contend that the Examiner “fails to establish a prima facie case of obviousness through the combination of [Takashi] and Dubois.” App. Br. 24. More specifically, Appellants contend that “the Examiner fails to assert how the mere recitation of a lure made from a thin, sheet-like material can teach a person to create a completely different lure [i.e. Takashi] from that thin, sheet-like material.” App. Br. 25. The Supreme Court provides instruction that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court also provides instruction that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We are also provided instruction that “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” and that a “person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21. Appellants do not contend that making Takashi’s lure from sheet metal is beyond the ability of one skilled in the art or that doing so would not yield a predictable result. Instead Appellants’ contend that the “simple recognition that some fishing lures . . . are made from thin, sheet-like Appeal 2011-004794 Application 11/055,371 18 materials cannot teach how to make the [Takashi] lure from a thin, sheet-like material.” App. Br. 25. Here, the teaching relied on by the Examiner derives from the desire expressed by the Examiner to both (a) make the lure “more attractive to fish” (Ans. 9) and (b) that “making the device flexible/lightweight while also making the device durable [enables] repeated usage” (Ans. 12). Appellants do not show how these desires are unreasonable. Further, Appellants’ contention regarding the Examiner’s addition of sheet metal to Takashi’s lure when such a feature is not already taught by Takashi is not persuasive in view of Takashi’s clear disclosure of a thin/small thickness as discussed by the Examiner. App. Br. 25, Ans. 12. Accordingly, Appellants’ contentions are not persuasive and we sustain the rejection of claims 20-23. Claims 33 and 34 The rejection of claims 33 and 34 has previously been sustained as failing to comply with the written description requirement. Ans. 3. These claims are also rejected as being obvious over Takashi and Dubois. Ans. 8. Here, the Examiner clearly identifies Dubois item 14 as the claimed “main body” (Ans. 9, 12) yet Appellants present arguments based on the main body being the combination of both items 14 and 26 (“the main body of the lure itself forms the rattle chamber” (App. Br. 27) hence the inclusion of Dubois’ base plate 26 which clearly closes rattle chamber 24). See Dubois Fig. 3. In view of the inclusion of additional component 26, Appellants’ make an argument that could not be made when the main body is simply item 14. See App. Br. 27. Appellants also contend that “Dubois does not teach a rattle device having a rattle chamber separate from the main body” (App. Br. 26, 27) but Appellants do not identify any claim limitation requiring that the Appeal 2011-004794 Application 11/055,371 19 rattle chamber be separate from the main body. Appellants also contend that Dubois’ “main body includes an interior pocket” and that “[w]ithin that pocket are housed the rattle elements.” App. Br. 27. The same can be said for Appellants’ device. We are thus not persuaded by Appellants’ contentions and, based on the record presented, sustain the Examiner’s rejection of claims 33 and 34 as being obvious over Takashi and Dubois. DECISION The Examiner’s rejections of claims 1, 2, 6, 8, 13, 16, 20-25 and 32- 34 are affirmed. The Examiner’s rejections of claims 10-12, 14, 15, 26-29 and 31 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART ELD Copy with citationCopy as parenthetical citation