Ex Parte Bielinski et al

Board of Patent Appeals and Interferences

Sep 22, 2003

09584173 (B.P.A.I. Sep. 22, 2003)

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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD D. J. BIELINSKI and WILLIAM E. WATERS
____________
Appeal No. 2003-0491
Application No. 09/584,173
____________
ON BRIEF
____________
Before COHEN, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/584,173
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1 The examiner’s reference to claims 2-4 in the answer was clearly an inadvertent error.
BACKGROUND
The appellants’ invention relates to holders for fishing rods which provide means
for automatically setting the hook at the end of the fishing line when a fish strikes the
bait. A copy of the claims under appeal is set forth in the appendix to the appellants’
brief.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Becker et al. (Becker) 975,822 Nov. 15, 1910
Creviston et al. (Creviston) 3,550,302 Dec. 29, 1970
Moisan 4,573,281 Mar. 4, 1986
Smoluk 4,912,870 Apr. 3, 1990
The following rejections are before us for review.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by
Smoluk.
Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Smoluk in view of Moisan.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Becker in view of Creviston.1
Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Becker in view of Creviston and Moisan.
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(Paper No. 12) for the examiner's complete reasoning in support of the rejections and to
the brief (Paper No. 11) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. For the reasons
which follow, we cannot sustain any of the examiner’s rejections.
The Smoluk rejections
Claim 1 is directed to a fish-activated hook-setting assembly adapted for use with
unattended fishing poles comprising, inter alia, a pole holding means attachable to the
base and coactive therewith to support a fishing pole therein. Smoluk discloses an ice
fishing apparatus comprising a base 12, an arm 30 extending outwardly from the base
and spool 32, having a supply of fishing line 10 thereon, mounted on the arm 30. The
fishing line 10 is fed through guides on the base 12. Smoluk does not teach a fishing
pole or any structure used for holding a fishing pole. In rejecting claim 1 as being
anticipated by Smoluk, the examiner has taken the position that the base 12, arm 30
and spool 32 define a pole holding means (answer, page 4). Specifically, the examiner
(answer, page 7) states that
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[t]he reel (32), arm (30), and base (12) of Smoluk form an
area or open space defined therebetween that is capable of
receiving and holding a fishing pole therein. Similarly as
appellant’s holder (40) receives the pole in a slanted
position, the rod holding structure of Smoluk is capable of
receiving the rod in a slanted position. Appellant has not
recited the particulars with regard to the pole holding
member in such a manner which overcomes the Smoluk
reference. Appellant has not particularly claimed the pole
holding means comprising an outwardly extending bar
defining a notch therein for receiving the pole in
combination with a fishing pole. It is the Examiner’s
position that the Smoluk reference meets the limitation of
pole holding means since the structure of Smoluk is
perfectly capable of performing the functional language as
recited.
The examiner’s position with regard to the pole holding means limitation is not
well taken. From our perspective, one of ordinary skill in the art viewing the Smoluk
disclosure would not consider the base 12, arm 30 and spool 32 to define a pole
holding means. We note further that claim 1 recites a pole holding means to support a
fishing pole therein, which is limited, under the provisions of the sixth paragraph of 35
U.S.C. § 112, to the structure described in appellants’ specification and equivalents
thereof. The examiner has not pointed out the corresponding structure described in
appellants’ specification for performing the pole holding function and has not explained
either how the referenced structure in Smoluk responds to such structure or the basis
for concluding that it is an equivalent thereof.
To anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
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Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001);
Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576, 18
USPQ2d 1001, 1010 (Fed. Cir. 1991). Inasmuch as we agree with appellants that
Smoluk lacks a teaching of a pole holding means, we conclude that the subject matter
of claim 1 is not anticipated by Smoluk. We thus cannot sustain this rejection.
We also cannot sustain the rejection of claims 2-4, which depend from claim 1,
as being unpatentable over Smoluk in view of Moisan. Moisan, relied upon by the
examiner for its teaching of using a rubber grip material for holding fishing line, does not
cure the above-noted deficiency of Smoluk.
The Becker in view of Creviston rejections
Becker discloses an automatic fish catching device into which fishing line 15 is
fed. When a fish grasps the hook on the end of the line, a spring-loaded lever 5 is
released from its position shown in Figure 1 in which it is latched to the vertical limb 3
and swings to the lowered position shown in Figure 2. The examiner concedes that
Becker lacks a pole holding means. In view of the teachings of Creviston of the
attachment of a fishing pole to an automatic motion lure and alert, the examiner
determined that it would have been obvious to modify Becker’s device such that a rod
holder is employed in order to secure a fishing rod in close proximity to the hook setting
device so that the angler may retrieve the fish quickly upon being hooked and also to
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provide means to prevent a rod from falling to the ground or into the water (answer,
page 5).
As stated by our reviewing court 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.
Thus, every element of a claimed invention may often be found in the
prior art. However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed
invention. 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 [citations omitted].
In this instance, we find no suggestion in Becker or Creviston to make the
modification to Becker proposed by the examiner. Becker is directed to an automatic
fish catching device which operates to pull the line to set the hook in the fish’s mouth to
catch the fish when a fish tugs on the line, while Creviston is directed to a lure and
alarm device for periodically imparting motion to the fishing line and for activating an
alarm when a fish pulls on the line. As disclosed by Creviston in column 4, lines 17-24,
the reel 90 on fishing pole 12 may be of a conventional manual type which permits the
fisherman to reel in the catch after being alerted to a bite or reel 90 may be a spring-
loaded reel, known in the art, including a latch mechanism for automatically reeling in
the fish after the fish has exerted a pull on the line. It is not apparent to us why one of
ordinary skill in the art reading the disclosures of both Becker and Creviston would have
been led to attach a fishing rod to the device of Becker. Rather, Creviston would
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2 Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
appear to us to have suggested to one of ordinary skill in the art, seeking to utilize a
fishing rod to automatically set a hook in a fish’s mouth and catch the fish after the fish
has pulled on the line, provision of a spring-loaded reel on a fishing rod for achieving
such purpose. In light of this simple solution proposed by Creviston, there would
appear to be no reason to modify the Becker device so as to mount a fishing pole
thereto.
For the foregoing reasons, the examiner’s rejection of claim 1 as being
unpatentable over Becker in view of Creviston appears to stem from impermissible
hindsight2 using appellants’ disclosure as a template to reconstruct the invention of
claim 1. Accordingly, we cannot sustain this rejection.
Moisan provides no cure for the above-noted deficiency of the combination of
Becker and Creviston. It thus follows that we shall also not sustain the rejection of
claims 2-4 as being unpatentable over Becker in view of Creviston and Moisan.
CONCLUSION
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To summarize, none of the examiner’s rejections is sustained. The decision of
the examiner to reject claims 1-4 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 09/584,173
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William E. Walters
1951 W. Calle Pacifica
Tucson AZ 85745