Ex Parte Bennis

Board of Patent Appeals and Interferences

Jul 27, 2007

09766032 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY L. BENNIS
____________

Appeal 2007-1788
Application 09/766,032
Technology Center 3600
____________

Decided: July 27, 2007
____________

Before ERIC GRIMES, LORA M. GREEN and NANCY J. LINCK,
Administrative Patent Judges.

Opinion by GREEN, Administrative Patent Judge. Opinion concurring-in-
part and dissenting-in-part by GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 18, 19, and 22. We have jurisdiction
under 35 U.S.C. § 6(b). The claims read as follows:

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Application 09/766,032

18. A two-stage fishing bobber responsive to different fishing forces
comprising:
a bobber main body, said bobber main body providing a buoyant force
to normally maintain the bobber main body in a floating condition; and
a spring having a spring constant that is about equal to the spring
constant of the bobber in water or the total force to compress the spring with
respect to the bobber main body is approximately equal to the total force to
submerge the bobber main body and a resiliently displaceable member to
thereby allow the simultaneous submersion of the bobber main body and the
displacement of the member with respect to the bobber main body so as to
provide gradual resistance.

19. The two[-]stage fishing bobber of claim 18 wherein the force to
displace said member to a down position is substantially equal to the
buoyant force of the bobber main body so that the [sic] when the member is
in the down position the bobber main body is submerged.

22. A two-stage fishing bobber responsive to different fishing forces
comprising:
a bobber main body, said bobber main body providing a buoyant force
to normally maintain the bobber main body in a floating condition; and
a member resiliently displaceable with respect to said bobber main
body in response to a force on said member with the force on said member
sufficient to overcome at least some if not all of the buoyant force of the
bobber main body to thereby allow the simultaneous submersion of the
bobber main body and the displacement of the member with respect to the
bobber main body so as to provide gradual resistance.

The Examiner relies on the following reference:
Riead US 4,461,114 Jul. 24, 1984

We affirm.

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BACKGROUND
“When fishing with a bobber, it can sometimes be difficult to
determine when a fish is nibbling on the angler’s line, especially in waters
that have active waves or when one is fishing for passive or highly sensitive
fish” (Specification 2). According to the Specification, the described bobber
“supplies visual information to the fisherperson through a first-stage
slideable rod that allows the fisherperson to visually determine if a fish is
nibbling the bait by visually observing the displacement of the slideable rod
with respect to a bobber main body but before visual displacement of the
bobber main body can be visually detected. The second-stage permits
anglers to fish in a conventional manner as visual information is provided by
submersion of both the slideable rod and the bobber main body.” (Id. at 2-
3.)
The Specification describes “a two-stage fishing bobber with a main
body carrying a first-stage free sliding retractable rod having a fishing line
engaging member with part of the free sliding retractable rod extending
sufficiently above the main body to enable a fisherperson to keep visual
track of the displacement of the free sliding retractable rod with respect to
the main body. When fishing for large or aggressive fishes, the second stage
of the two-stage bobber is used as a conventional fishing bobber which is
submerged as the fish pulls on the line. When fishing for smaller, passive or
sensitive fishes, the two-stage bobber can be used as a sensitive detection
device as only a slight pull on the line produces a depression of the free
sliding rod with respect to the bobber main body to allow a fisherperson to
visually detect when a fish is nibbling on the bait well before the main body
is visually detectable as being displaceable with respect to the body of water.
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By selecting the appropriate spring constant the bobber main body can be
made to simultaneously submerge as a fish displaces the slid[e]able rod with
respect to the bobber main body to thereby provide gradual and smoothly
increasing resistance.” (Id. at 3-4.) The Specification also discloses a
preferred embodiment in which “the force required to completely depress
the spring [is] approximately equal to the buoyancy force of bobber main
body” (Id. at 9).

DISCUSSION
Claims 18, 19, and 22 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Riead.
According to the rejection set forth by the Examiner:
The patent to Riead shows a bobber in Fig. 1 having a
main body 2 providing a buoyant force to normally maintain
the bobber main body in a floating condition and a spring 64
having a spring constant that is about equal to the spring
constant of the bobber in water or the total force to compress
the spring with respect to the bobber main body is
approximately equal to the total force to submerge the bobber
main body and the resiliently displaceable member 62 to allow
the simultaneous submersion of the bobber main body and the
displacement of the member with respect to the bobber main
body so as to provide gradual resistance as disclosed in column
5, lines 1-25.

(Office Action mailed November 16, 2005, 2).
The burden is on the Examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d 1335, 1338, 62 USPQ2d 1151,
1152 (Fed. Cir. 2002). In order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed
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invention, either explicitly or inherently. See In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). We agree with the
Examiner that Riead teaches all of the limitations of claims 18, 19, and 22,
and the rejection is affirmed.
Appellant argues that Riead does not show that spring 64 has a spring
constant to compress the spring 64 with respect to the main body 2
“approximately equal to the total force to submerge the bobber main body 2
and Riead’s washer 62 ‘ . . . to thereby allow the simultaneous submersion of
the bobber main body and the displacement of the member with respect to
the bobber main body so as to provide gradual resistance . . .’ as called for in
Appellant’s claims 18 and 19.” (Br. 8.) Appellant points to column 5, lines
1-25 of Riead, which teaches that the spring 64 has a tension that provides
sufficient sensitivity to the lamp switch 40 such that the lamp is lighted by
an additional leader load less than that required to submerge the float
completely (Br. 8-9). Thus, Appellant argues, as Riead teaches that the
compression of spring 64, which leads to the lighting of the lamp by an
additional leader load less than that required to submerge the float
completely, that Riead does not teach the subject matter of claims 18 and 19
as the patent does not provide for “simultaneous submersion of the bobber
main body and the displacement of the member with respect to the bobber
main body so as to provide gradual resistance.” (Br. 9.)
Claim 18 requires: (1) a bobber main body, said bobber main body
providing a buoyant force to normally maintain the bobber main body in a
floating condition; and (2) a spring having a spring constant that is about
equal to the spring constant of the bobber in water or the total force to
compress the spring with respect to the bobber mail body is approximately
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equal to the total force to submerge the bobber main body and a resiliently
displaceable member to thereby allow the simultaneous submersion of the
bobber main body and the displacement of the member with respect to the
bobber main body so as to provide gradual resistance.
Riead teaches a bobber having a hollow buoyant body member (the
bobber main body of claim 18) that is at least partially transparent and
contains an electric bulb, wherein tension on the leader line actuates the bulb
(Riead, abstract). Figure 2 is a cross-sectional view of the bobber of Riead,
and is set forth below:

As noted by the Examiner in the rejection, 2 applies generally to the
main body of the bobber. Spring 64 is disposed between the washer 62 and
the collar 66, and the closure of the switch is yieldably resisted by the spring
64 (Riead, col. 3, ll. 47-58). Riead teaches that:
Turning collar 66 adjusts the tension of spring 64, and the
adjustment may be made with the float in the water, taking care
that the lamp does not light under normal leader load, or under
any normal and reasonable agitation of the float, but does light
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in response to a downward pull on the leader, before the float
body submerges completely. Spring switch arm 40 is
sufficiently delicate that, when spring 64 is completely relaxed,
arm 40 will provide the desired sensitivity under the lightest
normal leader load likely to be encountered, while spring 64 is
sufficiently heavy to be capable of reducing the switch
sensitivity to a level adapted to the greatest normal leader load
likely to be encountered.

(Id., col. 5, ll. 12-25.)
As further explained by Riead:
If the float body is equipped with a lamp bulb as
described, the problem is compounded, since the sensitivity of
the lamp actuating switch must be closely correlated to the
buoyancy of the float body. If the switch is too sensitive, the
lamp may light even when a fish has not taken the bait, the
switch being closed by the normal leader load alone, or by
ripples at the water surface. If the switch is too insensitive, the
leader load occasioned by a fish’s taking the bait may not close
the switch at all, or only after the float is submerged, in view of
the already only slight float buoyancy. Therefore, for
maximum efficiency, the float buoyancy should be only very
slightly greater than its own weight plus the variable leader
load applied thereto, so that it is submerged by only a slight
increase in leader load which occurs when a fish takes the bait,
and the lamp switch sensitivity should be such that the switch is
closed by a still smaller increase in the leader load.

(Id., col. 1, ll. 51-68 (emphasis added).)
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004). “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,
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as much as possible, during the administrative process.” In re Zletz, 893
F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Claim 18 uses the terms “about” and “approximately.” We first look
to the Specification to determine whether Appellant has acted as his own
lexicographer in defining “about” and “approximately.” See Merck & Co.,
v. TEVA Pharmaceuticals USA, Inc., 395 F.3d 1364, 1369-70, 73 USPQ2d
1641, 1646 (Fed. Cir. 2005). Our review of the Specification, however, does
not reveal that “about” and “approximately” have been defined in way
different from their ordinary meaning.1 We thus interpret those terms
consistent with their ordinary meaning. See id. “About” may be defined by
its ordinary and accepted meaning of “approximately.” See id., 395 F.3d at
1372, 73 USPQ2d at 1648. Turning to “approximately,” that term may be
defined as “nearly exact, not perfectly accurate or correct.”2 Thus, as Riead
teaches that the float buoyancy of the bobber (i.e. the spring constant of the
bobber in water) is only slightly greater than switch sensitivity, which is

1 The dissent would limit “approximately equal” to the embodiment shown in
Figures 11-13. While the Specification at page 9 states that Figures 11-13
show an alternate preferred embodiment of the invention wherein the force
required to completely depress the spring 12 approximately equal to the
buoyancy force of bobber main body 15, there is nothing that limits the
language “approximately equal” to only that preferred embodiment. There
are many embodiments that fall between the embodiment shown in Figures
2-4 and Figures 11-13, and the bobber that is described by Riead
demonstrates one of those embodiments. In our view, the dissent is reading
limitations from the specification into the claims, a practice that the Court of
Appeals for the Federal Circuit, our reviewing court, cautions against. See
SuperGuideCorp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69
USPQ2d 1865, 1868-69 (Fed. Cir. 2004).
2 Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House, Inc.
http://dictionary.reference.com/browse/approximately (accessed: June 28,
2007).
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imparted by spring 64 (i.e., the spring constant of the spring), Riead teaches
that the float buoyancy of the bobber is about or approximately the same as
the spring constant of the spring 64.
As to the limitation of allowing “the simultaneous submersion of the
bobber main body and the displacement of the member with respect to the
bobber main body so as to provide gradual resistance,” there is nothing in
the claim that requires that once the spring is in its fully displaced position
that the bobber be completely submerged. Giving the claim its broadest
reasonable interpretation consistent with the discussion above, we interpret
this limitation as requiring that the bobber be more submerged when the
spring is displaced, such as when a fish bites the baited hook, than before
any displacement of the spring, that is, the level of the bobber in the water
before the fish takes the bait. Given Riead’s description of the bobber
described by the patent, i.e.,, that the float buoyancy of the bobber (i.e., the
spring constant of the bobber in water) is only slightly greater than switch
sensitivity, upon a fish taking the bait, more of the bobber main body would
be submerged upon lighting of the lamp when compared to the level of
submersion of the bobber main body when no fish has taken the bait.
As to claim 19, Appellant argues that Riead does not teach a force to
displace the washer 62 as being substantially equal to the buoyant force of
body 2, such that when the washer is in the down position the body is
submerged (Br. 10). Rather, Appellant urges, Riead teaches the opposite by
teaching that the washer 62 is first displaced without submergence of the
body 2 to light the lamp in order to provide a visual cue that a fish has taken
the bait, and it is only after the light has been lit does the body submerge
(Br. 10).
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Claim 19 requires that “the force to displace said member to a down
position is substantially equal to the buoyant force of the bobber main
body.” As we can find no definition for “substantially” in the Specification,
we use its ordinary and accepted meaning of “to a great extent or degree.”3
We thus interpret claim 19 as requiring that the force to displace said
member to a down position is almost the same as, but not necessarily equal
to, the buoyant force of the bobber main body. As explained above, Riead
teaches the float buoyancy of the bobber (i.e. the spring constant of the
bobber in water) is only slightly greater than switch sensitivity, and “only
slightly greater” reads on “substantially.” Thus, even though Riead teaches
that the washer 62 is first displaced without submergence of the body 2 to
light the lamp in order to provide a visual cue that a fish has taken the bait,
and it is only after the light has been lit does the body submerge, because of
only the slight difference, the lamp would light and then only slightly
thereafter the body would be completely submerged.
As to claim 22, Appellant argues that Riead does not teach “the
simultaneous submersion of the bobber main body and the displacement of
the member with respect to the bobber main body so as to provide gradual
resistance.” (Br. 12.) Appellant asserts that the washer 62 is located
underneath the body 2, and thus would be submerged before the body (id.).
Thus, according to Appellant, Riead does not provide for gradual resistance,
and is not even concerned with the advantage of providing for gradual
resistance.

3 Dictionary.com. WordNet® 3.0. Princeton University.
http://dictionary.reference.com/browse/substantially (accessed: June 28,
2007).
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First, the fact that the washer would be submerged before the main
body of the body is submerged is irrelevant, as there is nothing in the claim
that requires that the main body of the bobber to be submerged before the
“member resiliently displaceable with respect to said bobber main body,”
i.e., the washer. Moreover, as taught by Appellant, it is the action of the
spring and the spring constant that provides the gradual resistance
(Specification, 14). Thus as the bobber of Riead also has a spring with a
spring constant that is displaced by a fish taking the bait, the bobber of Riead
would also inherently provide gradual resistance. “[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.” In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“When the claimed compositions are not novel they are not rendered
patentable by recitation of properties, whether or not these properties are
shown or suggested in the prior art.” Id. at 709, 15 USPQ2d at 1658.
CONCLUSION
In summary, we find that Riead teaches all of the limitations of claims
18, 19, and 22, and the rejection is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2006).

AFFIRMED

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GRIMES, Administrative Patent Judge, concurring-in-part and dissenting-
in-part.
I agree with the majority that Riead anticipates claim 22. However, I
do not agree that Riead anticipates claims 18 and 19. I would reverse the
rejection of those claims.
Claim 18 requires the bobber to have “a spring having a spring
constant that is about equal to the spring constant of the bobber in water or
the total force to compress the spring with respect to the bobber main body
is approximately equal to the total force to submerge the bobber main body”
(emphases added). Similarly, claim 19 requires that the “force to displace
said member to a down position is substantially equal to the buoyant force
of the bobber main body” (emphasis added). I do not agree that Riead meets
these limitations.
The instant Specification describes and illustrates two embodiments of
the disclosed bobber:
[In] the two-stage fishing bobber of Figures 2-4 the force
required to depress spring 12 is sufficiently less than the force
required to submerge the bobber main body 15. . . . An alternate
preferred embodiment of the invention is to have the force
required to completely depress the spring 12 approximately
equal to the buoyancy force of bobber main body 15. This
embodiment is illustrated in Figures 11- 13.
(Specification 9: 6-20.) Thus, the Specification describes the embodiment of
Figures 2-4 as having a spring constant “sufficiently less” than the bobber’s
buoyant force (see also Specification 7: 24 to 8:23), while in the
embodiment of Figures 11-13 the spring constant is “approximately equal”
to the bobber’s buoyant force (see also Specification 15: 1 to 17:4).
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Figures 2-4 of the instant application are reproduced below (with
reference numerals omitted for clarity):

The figures illustrate the embodiment in which the spring constant is
“sufficiently less” than the bobber’s buoyant force. In this embodiment, the
force required to fully compress the spring causes only minor submersion of
the bobber main body (see Fig. 3).
Figures 11-13 are reproduced below (reference numerals omitted):
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These figures illustrate the embodiment in which the spring constant
is “approximately equal” to the bobber’s buoyant force. In this embodiment,
the force required to fully compress the spring also causes complete
submersion of the bobber main body (see Fig. 13).
In my view, when claims 18 and 19 are read in light of the
Specification, they are directed to the embodiment depicted in Figures 11-
13, but do not read on the embodiment depicted in Figures 2-4. That is, I
would read the “about equal” (or “approximately” or “substantially” equal)
limitations to require an effect like that shown in Figures 11-13: the force
required to fully compress the spring also causes complete submersion of the
bobber main body.
Riead does not disclose the bobber of claims 18 and 19, properly
interpreted. Riead describes a bobber containing a lamp bulb (Riead,
Abstract). The circuit of lamp bulb 22 is closed when a resilient switch
arm 40 is moved downwardly (id. at col. 3, ll. 20-22). Closure of this switch
is resisted by spring 64 (id. at col. 3, ll. 55-58). When a fish pulls on the
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leader, it compresses the spring, closes the switch, and actuates the bulb (id.
at Abstract).
As noted by the majority, Riead describes adjusting the buoyancy of
the float and the sensitivity of the lamp-actuating switch:
[F]or maximum efficiency, the float buoyancy should be only
very slightly greater than its own weight plus the variable
leader load applied thereto, so that it is submerged by only a
slight increase in leader load which occurs when a fish takes the
bait, and the lamp switch sensitivity should be such that the
switch is closed by a still smaller increase in the leader load.
(Id. at col. 1, ll. 51-68.) Riead states that the switch sensitivity “must be
sufficiently great that the lamp will be lighted by an additional leader lead
less than that required to submerge the float completely. Otherwise the
lamp might not light at all, or only after the float was submerged, when it
would be useless.” (Id. at col. 5, ll. 9-13, emphasis added.) Thus, Riead
describes adjusting “the tension of spring 64, . . . [so] that the lamp . . .
light[s] in response to a downward pull on the leader, before the float body
submerges completely” (id. at col. 5, ll. 13-19, emphasis added).
That is, Riead requires that spring 64 be compressed completely, to
close the switch and actuate the light bulb, before the bobber is submerged.
In contrast, claims 18 and 19 require the spring to be completely compressed
only when the bobber main body is completely submerged.
As discussed above, I would interpret the term “about equal” (or
“approximately equal” or “substantially equal”), in light of Appellant’s
Specification, to exclude the embodiment depicted in instant Figures 2-4.
In my view, the majority’s interpretation is unreasonably broad. As I
interpret the claims, they do not read on the teaching in Riead of a bobber
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having a float buoyancy that is greater than the spring constant that controls
its switch sensitivity.
In sum, I agree that Riead describes a bobber according to claim 22.
However, I do not agree that Riead describes all of the limitations of
claims 18 and 19. Therefore, in my view, the rejection of claims 18 and 19
should be reversed.

lbg

CARL L. JOHNSON
JACOBSON AND JOHNSON
SUITE 285
ONE WEST WATER STREET
ST. PAUL MO 55107-2080
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