Ex Parte Buzzi

Board of Patent Appeals and Interferences

Dec 14, 2011

12170096 (B.P.A.I. Dec. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. BUZZI
____________

Appeal 2011-009767
Application 12/170,096
Technology Center 1600
____________

Before DONALD E. ADAMS, LORA M. GREEN,
and STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-13, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to a biocompatible, biodegradable plastic
carrier for a fish attractant or stimulant, suitable for use as a component of a
fish lure or bait. Claim 1 is representative and is reproduced in the “Claims
Appendix” of Appellant’s Brief (App. Br. 34).
Appeal 2011-009767
Application 12/170,096

2
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kelley,1 Shapero,2 Wolford,3 and Coffin.4
We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion that it would have been prima facie obvious to a person of
ordinary skill in this art at the time the invention was made to utilize
Shapero’s polymeric blend of polyvinyl alcohol in Kelley’s composition?
FACTUAL FINDINGS (FF)
FF 1. Kelley suggests molded biodegradable fishing lure compositions that
comprise humectant, plasticizer, aqueous solvent, and a long-chain polymer
such as polyvinyl alcohol (PVA) (Ans. 5-6; Kelley, col. 3, ll. 1-2).
FF 2. Kelley’s “‘long-chain polymer’ . . . refers to network and linear
polyhydroxy polymers with a molecular weight of not less than 195,000 and
a degree of polymerization (DP) above 2000” (Kelley, col. 2, ll. 59-62).
FF 3. Kelley’s lures “are soft and . . . exhibit superior durability, tensile
strength, flexibility, elasticity, cohesive strength, aesthetic appeal, and low
cost” (Kelley, col. 2, ll. 15-17).
FF 4. Kelley suggests that “large/heavy lures molded from the . . .
polymers and gums [of Kelley’s invention] . . . would not stay on a hook,
would slip down or off the hook, or would fracture and break after several
hard casts while being fished” unless they were subjected “to freezing

1 Kelley, US 6,174,525 B1, issued January 16, 2001.
2 Shapero, US 5,506,290, issued April 9, 1996.
3 Wolford et al., US 4,731,247, issued March 15, 1988.
4 Coffin et al., US 5,646,206, issued July 8, 1997.
Appeal 2011-009767
Application 12/170,096

3
temperatures for various time intervals” after molding (Kelley, col. 3, ll. 26-
33).
FF 5. Kelley fails to suggest, inter alia, the use of “a blend of polyvinyl
alcohol grades with different molecular weights between 31,000-186,000”
(Ans. 7).
FF 6. Shapero suggests a biodegradable “moldable composition
comprising a polyvinyl alcohol blend, humectant, plasticizer, and aqueous
solvent” (Ans. 6).
FF 7. Shapero suggests a “polyvinyl alcohol blend compris[ing] 30 wt% of
a first grade with a molecular weight of about 85,000-146,000 and 70 wt%
of a second grade with a molecular weight of about 31,000-50,000, wherein
both grades have a degree of hydrolysis of about 90%” (Ans. 6).
FF 8. Shapero’s “invention is directed to a plastic moldable composition of
matter which remains moldable throughout its effective life” (Shapero, col.
3, ll. 34-36).
FF 9. Shapero’s composition “can be molded retaining detail until it is
reformed and which can be extruded smoothly” (Shapero, col. 2, ll. 19-21
(emphasis added)).
FF 10. The Examiner relies on Wolford and Coffin to suggest limitations of
Appellant’s dependent claims (see Ans. 7; Cf. claims 6 and 7).
ANALYSIS
Based on the combination of Kelley, Shapero, Wolford, and Coffin,
the Examiner concludes that it would have been prima facie “obvious for
one of ordinary skill in the art at the time of the present invention to . . .
produce a biocompatible, biodegradable plastic carrier for a fish attractant or
stimulant, suitable for use as a fish lure, comprising a blend of two or more
Appeal 2011-009767
Application 12/170,096

4
polyvinyl alcohol grades having different molecular weights between
31,000-186,000” (Ans. 8).
Appellant contends that “Shapero teaches a composition that would
not function as a fish lure according to Kelley’s requirements” (App. Br. 7).
In this regard, Appellant contends that “Kelley requires that its fishing lures
exhibit ‘strength, elasticity and flexibility necessary to remain empaled [sic]
on a fishhook while casting, trolling, and the like actions used in fishing’”
(App. Br. 8; see FF 3-4; Buzzi Declaration5 ¶ 14). In contrast, Appellant
contends that Shapero’s composition “remains moldable throughout its
effective lifetime” and therefore “would not meet the[] requirements for . . .
[Kelley’s] fishing lure” (id.; see FF 8-9; Buzzi Declaration ¶ 13). We agree.
We are not persuaded by the Examiner’s assertion that Kelley’s
composition is re-moldable until it undergoes a freeze/thaw procedure to
provide “sufficient strength and cohesiveness under ambient conditions to
effectively function as a fishing lure” and Shapero’s composition
exhibits sufficient strength and cohesiveness to retain its shape
under ambient conditions . . . [o]ne of ordinary skill would . . .
be motivated to incorporate the specific Shapero PVA polymer
blend into the Kelley composition, with the reasonable
expectation that the resulting composition would have sufficient
strength and cohesiveness under ambient conditions to
optimally function as an effective fishing lure without requiring
the added freeze/thaw step to complete its manufacture.

(Ans. 12.) The Examiner failed to establish an evidentiary basis to support a
conclusion that a person of ordinary skill in this art would have reasonably
expected Shapero’s composition, which is “moldable throughout its effective

5 Declaration under 37 C.F.R. 1.132 of William R. Buzzi, executed April 4,
2010.
Appeal 2011-009767
Application 12/170,096

5
life,” to exhibit the same or similar cohesive strength as Kelley’s
composition (see FF 3-4; Cf. FF 8-9; see also App. Br. 9). While the
Examiner correctly finds that Shapero’s composition is moldable and retains
its shape under ambient conditions, the Examiner fails to account for
Shapero’s suggestion that any particular shape sculpted from Shapero’s
composition is retained until it is reformed, a characteristic that is
discouraged by Kelley (see FF 9; Cf. FF 3-4; see also Reply Br. 3-4).
Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Rather, obviousness requires the additional showing that a person of
ordinary skill at the time of the invention would have selected and combined
those prior art elements in the normal course of research and development to
yield the claimed invention. Id. at 421.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion that it would have been prima facie obvious to a person of
ordinary skill in this art at the time the invention was made to utilize
Shapero’s polymeric blend of polyvinyl alcohol in Kelley’s composition.
The rejection of claims 1-13 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kelley, Shapero, Wolford, and Coffin is reversed.
REVERSED

clj