Ex Parte Berge

Board of Patent Appeals and Interferences

Jul 2, 2008

10877721 (B.P.A.I. Jul. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
A. WAYNE BERGE
__________

Appeal 2008-1975
Application 10/877,721
Technology Center 3600
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Decided: July 2, 2008
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Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-14.1 The claims stand rejected as anticipated by and obvious over
the prior art. We have jurisdiction under 35 U.S.C. § 6(b).

1 Claims 15-25 are also pending, but are merely objected to.
Appeal 2008-1975
Application 10/877,721

We reverse.
STATEMENT OF THE CASE
“The present invention relates to a scent delivery system used to trick
a fish into biting a very sharp hook” (Spec. 1: 4-5).
Claims 1 and 14 are representative, and read as follows:
1. A fishing accessory comprising:
(a) an outer member securable to a fishing line and defining
an enclosure having a water inlet and a water outlet
together permitting the flow of water through said
enclosure; and
(b) a retainer within said enclosure and capable of releasably
retaining fish scent within a region spaced apart from
said water outlet.

14. A fishing accessory comprising:
(a) an outer member securable to a fishing line and defining
an enclosure suitable to contain fish scent;
(b) an inlet valve and an outlet valve, each suitable to adjust
a flow of water through said enclosure, and each of said
inlet and outlet valve defining an aperture of an
adjustable size into said enclosure.

The claims stand rejected as follows:
I. Claims 1-5 and 7-13 under 35 U.S.C. § 102(b) as anticipated by Miller
(U.S. Patent 2,769,268, issued November 6, 1956).

II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Miller and
Brandolino (U.S. Patent 5,319,875, issued June 14, 1994).

III. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Miller and Kita
(U.S. Patent 5,417,929, issued May 23, 1995).

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Appeal 2008-1975
Application 10/877,721

FINDINGS OF FACT (FF)
The Claimed Invention
1. Independent claim 1 is directed to a fishing accessory which can be
secured to a fishing line. The accessory has an outer member defining an
enclosure. A water inlet and a water outlet allow water to flow through the
enclosure. In addition, the accessory has “a retainer within said enclosure
and capable of releasably retaining fish scent within a region spaced apart
from said water outlet.”
2. As explained in the Specification, “the retainer 20 is positioned to
retain fish scent at a location spaced apart from the water outlet 18. This
helps to ensure that any solid fish scent in the retainer 20 does not obstruct
the flow of water out of the enclosure 14 and into the surrounding water”
(Spec. 5: 4-7).
3. Independent claim 14 is directed to a fishing accessory which can be
secured to a fishing line. The accessory has an outer member defining an
enclosure suitable to contain fish scent. The accessory has an inlet valve and
an outlet valve, “each suitable to adjust a flow of water through said
enclosure, and each of said inlet and outlet valve defining an aperture of an
adjustable size into said enclosure.”
4. The adjustable valves 28 at the water inlet 16 and the water outlet 18
“permit[ ] a user to adjust the flow of water through the enclosure 12, and
therefore the rate at which scent from the retainer 20 is released into the
surrounding water to attract fish” (Spec. 3: 22-26).

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Appeal 2008-1975
Application 10/877,721

Miller
5. Miller describes “a fish lure designed to emit a trail of [fish] scales . . .
when it is drawn through the water” (Miller, col. 1, ll. 15-17). “[A] scent
may be associated with the scales or included within and emitted from the
[lure] . . . to serve as an additional attracting agent” (Miller, col. 2, ll. 63-65).
6. “The lure includes a container 1, of elongated form, and . . . generally
cylindrical shape, within which the scales to be emitted are contained”
(Miller, col. 1, ll. 66-68).
7. Miller’s lure is shown in Figures 1-4, reproduced immediately below:

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Application 10/877,721

Figure 1 is a general side elevational view of Miller’s lure secured to a
fishing line L. Figure 2 is a general axial sectional view through the lure.
Figure 3 is a rear end view, and Figure 4 is a front end view.
8. “[B]oth the front and rear ends [of the lure] are apertured, the front
end having the entrance apertures 11 opening forwardly, and the rear end
having the exit apertures 12” (Miller, col. 1, l. 71 to col. 2, l. 2).
9. The “exit apertures [12] are of variable effective size, and this is
accomplished in any suitable way, as by mounting a disk 13 rotatively about
the axis of the container 1, . . . this disk having apertures 15, which
cooperate with the apertures 12 to vary the effective size of the latter”
(Miller, col. 2, ll. 2-8).
10. Disk 13 is immediately adjacent to exit aperture 12 (Figs. 2, 3).
DISCUSSION
All three of the Examiner’s rejections of the claims depend, at least in
part, on the Examiner’s interpretation of the configuration of Miller’s fishing
lure. The principal issue raised by the anticipation rejection of claims 1-5
and 7-13, as well as the obviousness rejection of claim 6, is whether Miller
describes a fishing lure with a retainer “capable of releasably retaining fish
scent within a region spaced apart from . . . [the] water outlet” of the lure
(claim 1). The issue raised by the obviousness rejection of claim 14 is
whether the combined teachings of Miller and Kita disclose or suggest a
fishing lure with an adjustable inlet valve.
Anticipation by Miller
Claims 1-5 and 7-13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Miller.
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Application 10/877,721

The Examiner contends that Miller describes a fishing accessory
comprising “an outer member 1 securable to a fishing line (L) and defining
an enclosure having a water inlet 11 and a water outlet 12 together
permitting the flow of water through said enclosure” (Ans. 3). In addition,
the Examiner contends that the fishing accessory described by Miller has “a
retainer 13 capable of releasably retaining fish scent positioned within said
enclosure at a location spaced apart from said water outlet” (id.).
Appellant contends that “Miller discloses no element within the
container 1 that restricts the movement of any or all of the fish scales to a
limited region within the container, let a lone [sic] a regions [sic] spaced
apart from a water outlet” (App. Br. 5). Moreover, “as clearly shown in
FIGS. 1 and 2 of Miller,” disk 13 “is located outside Miller’s enclosure”
(App. Br. 6), and “thus cannot retain the scales in the enclosure 1 within a
region spaced apart from the water outlet, as claimed” (App. Br. 5).
Appellant has the better argument. Miller’s disk 13 rotates about the
longitudinal axis of the lure, and apertures 15 on the disk cooperate closely
with exit apertures 12 to vary the effective size of exit apertures 12 as
desired (FF 8, 9; Figs. 2, 3). Thus, we find that Miller’s disk 13 is
immediately adjacent to exit apertures 12 (FF 10), and contrary to the
Examiner’s assertion, is incapable of functioning as a retainer that
“releasably retain[s] fish scent positioned within said enclosure at a location
spaced apart from said water outlet” (Ans. 3).
As each of the rejected claims requires “a retainer within said
enclosure and capable of releasably retaining fish scent within a region
spaced apart from said water outlet” (claim 1), and Miller does not describe
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Application 10/877,721

a structure that meets this limitation, we find that the Examiner has not
established an adequate factual basis for rejecting the claims as anticipated
by the prior art.
The rejection of claim 1-5 and 7-13 as anticipated by Miller is
reversed.
Obviousness over Miller and Brandolino
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller and Brandolino.
Brandolino is cited by the Examiner as evidence that a sponge soaked
in liquid scent is conventionally used as a solid scent material. However,
Brandolino does nothing to cure the underlying deficiency of Miller.
Accordingly, the rejection of claim 6 as unpatentable over Miller and
Brandolino is reversed.
Obviousness over Miller and Kita
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Miller and Kita.
According to the Examiner, Miller describes a fishing accessory
comprising “an outer member 1 securable to a fishing line (L) and defining
an enclosure having a water inlet 11 and a water outlet 12 together
permitting the flow of water through said enclosure” (Ans. 6). The
Examiner acknowledges that Miller “does not disclose that the [inlet] valve
is adjustable” (id.), and relies on Kita as disclosing “an adjustable valve 23
for scent dispensing” (id.).
The Examiner contends that “[i]t would have been obvious to one of
ordinary skill in the art . . . to apply the teaching of Kita of an adjustable
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Application 10/877,721

scent dispensing valve to the fishing lure of Miller in order to control the
rate of flow of scent from the lure, and to prolong the use of the device
without requiring refilling” (Ans. 6).
Appellant argues that Miller’s device has an adjustable outlet valve,
but the water inlet is “simply a slot” (App. Br. 10), and Kita likewise
“discloses an outlet air valve that is adjustable in size that controls the flow
of a gaseous, i.e fluid, scent into air dispensed by . . . air conditioning and
heating units” (App. Br. 11). Thus, Appellant contends “neither reference
discloses an inlet valve having an aperture of an adjustable size, and neither
reference discloses any motive for modifying a flow control system to
include both an inlet valve and an outlet valve each of an adjustable size”
(id.).
The Examiner does not dispute Appellant’s interpretation of the
references, but has not addressed this deficiency. Accordingly, the rejection
of claim 14 as unpatentable over Miller and Kita is reversed.
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Application 10/877,721

SUMMARY
The rejection of claims 1-5 and 7-13 under 35 U.S.C. § 102(b) as
anticipated is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Miller and Brandolino is reversed.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Miller and Kita is reversed.

REVERSED

cdc

CHERNOFF, VILHAUER, MCCLUNG & STENZEL
1600 ODS TOWER
601 SW SECOND AVENUE
PORTLAND OR 97204-3157
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