Ex parte Boucher

Board of Patent Appeals and Interferences

Mar 24, 1999

08427743 (B.P.A.I. Mar. 24, 1999)

Application for patent filed April 24, 1995. 1
Independent claim 21 has been amended subsequent to2
final rejection.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN C. BOUCHER, JR.
____________
Appeal No. 98-3354
Application No. 08/427,7431
____________
ON BRIEF
____________
Before CALVERT, MEISTER, and NASE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
John C. Boucher, Jr. appeals from the final rejection of
claims 21-35 and 37. Claims 38-40 stand allowed. Claim 36,2
Appeal No. 98-3354 Page 2
Application No. 08/427,743
The final rejection of claims 21-28 under 35 U.S.C. §3
112, second paragraph, was deemed by the examiner to have been
overcome by the above-noted amendment after final rejection
(see the advisory action mailed on August 28, 1996 (Paper No.
6)).
the only other claim remaining in the application, has been
indicated as being allowable subject to the requirement that it
be rewritten to include all the subject matter of the claims
from which it depends.
The appellant's invention pertains to a fishing lure
comprising a soft body that is flexible and resilient.
Independent claim 21 is further illustrative of the appealed
subject matter and a copy thereof may be found in APPENDIX A of
the brief.
The references relied on by the examiner are:
Guzik 4,345,399 Aug. 24, 1982
Salminen 5,090,151 Feb. 25, 1992
The claims on appeal stand rejected in the following
manner:3
(1) Claims 21 and 22 under 35 U.S.C. § 102(b) as being
anticipated by Guzik;
(2) Claims 23, 24 and 28-33 under 35 U.S.C. § 103(a) as
being unpatentable over Guzik; and
Appeal No. 98-3354 Page 3
Application No. 08/427,743
(3) Claims 25-27, 34, 35 and 37 under 35 U.S.C. § 103(a)
as being unpatentable over Guzik in view of Salminen.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief, and by
the examiner in the answer. As a consequence of this review we
will not sustain any of above-noted rejections.
Each of the above-noted rejections is bottomed on the
examiner's view that Guzik teaches (a) a body portion 12 which
can inherently be considered to be "flexible and resilient" and
(b) a weight means 60. In support of position (a) the examiner
opines that when the elastic members 28 and 60 of Guzik are
inserted through the holes 24, 26 that "the body will also
deform" (answer, page 6). In support of position (b) the
answer states that:
Appeal No. 98-3354 Page 4
Application No. 08/427,743
The weight recited in claim 21 is not recited to
cause the line to sink. Any object that has a
different density than the density of the lure body
can affect the overall density of the lure and can
act as a weight to be used to make the lure operate
on the water surface or at different depths beneath
the water surface. [Page 5.]
The appellant, however, disagrees. As to examiner's
position (a) the brief states that:
Applicant's specification states in lines 20-22
of page 7 that the lure body is to be "made from a
plastic material that is sufficiently soft that the
lure feels lifelike to game fish" . . . . Anyone
skilled in the fishing lure art has handled a live
bait, such as a minnow or a worm, and knows the way
fish bait that is lifelike feels. Accordingly, a
reasonable interpretation of the specification would
exclude hard and rigid lure bodies from meeting the
word "soft" or being covered by the word "soft" in
the claims because such hard and rigid bodies would
not feel lifelike. [Page 5.]
As to the examiner's position (b) the brief states that:
Those skilled in the fishing tackle art employ
the word "weight" for things that are used to cause
tackle or bait to sink in water. This is in accord
with the definition of the word weight in standard
dictionaries.
Applicant's specification states that the weight
is used to cause the lure to sink. (Lines 29 and 30
on page 6 and lines 1 and 2 and 18 on page 7) Since
the weight causes the lure to sink, it must have a
specific gravity greater than water. Therefore, the
Examiner's contention that the claims do not limit
the weight to being heavier than water is incorrect.
The limitations that the weight must be heavier than
Appeal No. 98-3354 Page 5
Application No. 08/427,743
water and that the weight causes the lure to sink in
water are therefore inherent in all of the claims.
[Page 6; footnote omitted.]
Having carefully considered the respective positions
advanced by the examiner and appellant we find ourselves to be
in substantial agreement with the appellant.
With respect to the examiner's position that the lure of
Guzik "inherently" has a "a flexible resilient soft body" which
would "deform" when the elastic members 28 and 60 are inserted
through the holes 24, 26, we have nothing in Guzik which would
reasonably support such a position. Guzik states that the
tubular body 12 may be formed "from a variety of appropriate
materials such as metal, plastic, or wood" (column 3, lines 18
and 19). Moreover, Guzik states that the hooks 20 and 22 are
attached to the tubular body 12 by screws (column 2, line 68)
and, additionally, states that the hooks may be attached "in
any other appropriate manner such as by an elongated through
bolt and nut, rivets spot welding, etc." (column 3, lines 2-4).
These teachings all suggest that the tubular body of Guzik is
relatively hard and rigid, not flexible, resilient and soft as
the examiner contends. Inherency may not be established by
probabilities or possibilities (see In re Oelrich, 666 F.2d
Appeal No. 98-3354 Page 6
Application No. 08/427,743
578, 581, 212 USPQ 323, 326 (CCPA 1981) and In re Rijckaert, 9
F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)) and,
when relying on the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly
inherent characteristic necessarily flows from the teachings of
the applied prior art (see Ex parte Levy, 17 USPQ2d 1461, 1464
(Bd. Pat. App. & Int. 1990)). Here, we do not find the
examiner has discharged that initial burden.
With respect to the examiner's position that the member 60
of Guzik can be considered as a "weight," we are of the opinion
that the examiner is attempting to expand the meaning of this
term beyond all reason. According to the appellant's
specification:
The weight means 10, 47, 56, and 61 may be made
from any convenient material, but preferably will be
a metal such as lead, stainless steel, aluminum
copper, or alloys of such metals. One of the
advantages of this invention is that the action of a
lure may be changed by changing the size and/or the
material of the weight means inserted into the lure
body cavity. For example, a fisherman may begin
fishing with a lure as shown in FIG. 12 using a
weight 61 made from aluminum. If the fisherman
determines that the lure does not sink to a
sufficient depth, the fisherman may stretch the
Appeal No. 98-3354 Page 7
Application No. 08/427,743
plastic body material around the hole 60 and remove
the weight from cavity 59. The aluminum weight can
then be replaced with a similar weight made from
lead, so the heavier weight will sink the lure to a
greater depth. Similar results can be achieved by
using smaller or larger weights made from the same
metal. This change is lure depth or action achieved
by changing weights does not require that the
fisherman untie and retie the fish line connected to
the lure. [Pages 6 and 7.]
The member 60 of Guzik, however, is a resilient, elastic
member that protrudes from the tubular body and bends as the
lure moves through the water to produce different sonic effects
(see, generally, column 3, and Fig. 7). While it is true that
the claims in a patent application are to be given their
broadest reasonable interpretation consistent with
specification (In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989)) and limitations from a pending
application's specification will not be read into the claims
during prosecution of a patent application (Sjolund v. Musland,
847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir. 1988)),
it is also well settled that terms in a claim should be
construed in a manner consistent with the specification and
construed as those skilled in the art would construe them (see
In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
Appeal No. 98-3354 Page 8
Application No. 08/427,743
1990), Specialty Composites v. Cabot Corp., 845 F.2d 981, 986,
6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)). Here, we can
think of no circumstances under which the artisan, consistent
with the appellant's specification, would construe the
resilient, elastic member 60 of Guzik to correspond to the
claimed weight.
With respect to claims 25-27, 34, 35 and 37, we have
carefully reviewed the teachings of Salminen but find nothing
therein which would overcome the deficiencies of Guzik that we
have noted above.
The examiner's rejections are all reversed.
REVERSED
Appeal No. 98-3354 Page 9
Application No. 08/427,743
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JMM/jlb
Appeal No. 98-3354 Page 10
Application No. 08/427,743
Charles M. Kaplan
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