Ex Parte Beil

Board of Patent Appeals and Interferences

Mar 24, 2005

09918074 (B.P.A.I. Mar. 24, 2005)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today as not
written for publication in a law journal and is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JURGEN BEIL
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Appeal No. 2005-0333
Application: 09/918,074
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ON BRIEF
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Before PAK, WARREN, and PAWLIKOWSKI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 18, which are all of
the claims pending in the above-identified application.

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Application No. 09/918,074
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APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a fish bait
comprising a porous thermoplastic plastic containing at least one
fish luring aromatic and/or fish enticing substance and methods for
making and using the same. See the specification, pages 1-3.
Details of the appealed subject matter are recited in
representative claims 1, 14 and 18, which are reproduced below:
1. Method for producing aromatic and/or enticing articles and
parts thereof, comprising treating a material comprising porous,
thermoplastic plastic with at least one fish-luring aromatic and/or
enticing substance.
14. Aromatic and/or enticing articles, comprising a porous,
thermoplastic plastic treated with at least one fish-luring
aromatic and/or enticing substance.
18. Method of luring fish, comprising placing a porous,
thermoplastic plastic treated with at least one fish-luring
aromatic and/or enticing substance in a body of water containing
fish.
PRIOR ART
The prior art references relied upon by the examiner are:
Larsen et al. (Larsen) 3,351,495 Nov. 7, 1967
Sibley et al. (Sibley) 4,887,376 Dec. 19, 1989
Reinhardt et al. (Reinhardt) 4,957,787 Sep. 18, 1990
REJECTION
Claims 1 through 7 and 13 through 18 stand rejected under 35
U.S.C. § 103 as unpatentable over the combined disclosures of
Reinhardt and Sibley. Claims 8 through 12 stand rejected under 35
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U.S.C. § 103 as unpatentable over the combined disclosures of
Reinhardt, Sibley and Larsen.
OPINION
As stated in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000),
Most if not all inventions arise from a combination of
old elements. See In re Rouffet, 149 F.3d 1350, 1357, 47
USPQ2d 1453, 1457 (Fed. Cri. 1998). Thus, every element
of a claimed invention may often be found in the prior
art. See Id. However, identification in the prior art
of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See Id.
Rather, to establish obviousness based on a combination
of the elements disclosed in the prior art, there must be
some motivation, suggestion or teaching of the
desirability of making the specific combination that was
made by the applicant. See In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). (Emphasis added).
Here, as correctly argued by the appellant, the examiner has
not identified any motivation, suggestion or teaching of the
desirability of employing a fish-luring aromatic, such as the one
taught in Sibley, in the artificial flower of the type discussed in
Reinhardt. To employ a fish-luring aromatic as proposed by the
examiner would be to render the artificial flower described in
Reinhardt unsuitable for its intended purpose. See Gordon, 733
F.2d at 902, 221 USPQ at 1127; Ex parte Hartman, 186 USPQ 366, 367
(Bd. App. 1974).
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As acknowledged by the examiner (Answer, page 5), Reinhardt,
for example, discloses treating its artificial flower with perfume,
an aromatic pleasant to humans. See also, e.g., Reinhardt, column
1, line 23. The examiner has not found that Reinhardt’s
artificial flower is known or intended to be used as a fish-bait
article. See the Answer in its entirety.
To remedy the deficiency of Reinhardt, the examiner has relied
on the teachings of Sibley. See the Answer, page 3, together with
the final Office action dated December 13, 2002, page 2. As
acknowledged by the examiner (the final Office action dated
December 13, 2002, page 2), however, Sibley only teaches using a
fish-luring aromatic in a fish-bait article. Although the examiner
has asserted at page 3 of the Answer that the perfume referred to
in Reinhardt is equivalent to or inclusive of a fish-luring
aromatic, such as the one taught in Sibley, the examiner has not
supplied any factual basis to support such an assertion. In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir.
2002)(“‘The factual inquiry whether to combine references must be
thorough and searching.’...It must be based on objective evidence
of record. This precedent has been reinforced in myriad decisions,
and cannot be dispensed with.”). Larsen relied on by the examiner,
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for example, is directed to using a specific polyolefin article as
a battery separator.
On this record, the examiner has not demonstrated that the
prior art references relied upon would have rendered the claimed
subject matter obvious to one of ordinary skill in the art within
the meaning of Section 103.
OTHER ISSUE
Although Sibley is directed to using a fish attractant in a
thermoset(cross-linked) plastic, it mentions in “BACKGROUND ART”
known scented fish-baits comprising fibrous plastic net works and
sponge-like devices containing fish attractants. See column 1,
line 60 to column 2, line 24. It is not clear from Sibley that the
fibrous plastic or sponge-like devices of the known scented fish-
baits are made of a thermoplastic plastic or a thermoset plastic.
Thus, to fully explore the state of the prior art, the examiner is
advised to conduct an additional search to determine whether these
known scented fish-baits are made of the claimed thermoplastic
plastic.
CONCLUSION
In view of the forgoing, we reverse the examiner’s decision
rejecting all the claims on appeal under 35 U.S.C. § 103 and advise
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the examiner to conduct a further search as indicated supra prior
to issuance of this application.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP:dal
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