Ex Parte Carnahan

Board of Patent Appeals and Interferences

Apr 24, 2007

10743380 (B.P.A.I. Apr. 24, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN M. CARNAHAN III
____________

Appeal 2006-2206
Application 10/743,380
Technology Center 3600
____________

Decided: April 24, 2007
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals the final rejection of claims 1, 2, and 4-11 under
35 U.S.C. § 134. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

Appeal 2006-2206
Application 10/743,380

INTRODUCTION
Appellant invented a method and a screening device for determining
fishing conditions (Specification 1; claim 7). The method includes placing a
screening device in the water of a shallow stream such that the screening
device spans the distance from the bottom of the stream to the surface of the
water (Specification 4). The screening device is left in the water for a period
of time to collect organisms on the screen (Specification 4). The screen is
removed from the water to inspect the types of organisms and determine the
proper fishing lure to use (Specification 4). The screening device comprises
two side rails (1 and 3) interconnected by pivotally attached segments (7 and
9) with at screen (17) attached to the two side rails (1 and 3) (Fig. 1 and
Specification 7-9). Claims 1, 7, and 8 are illustrative:
1. A method of detecting fishing conditions to allow for
selection of a proper fishing lure comprising:

a) providing a screening device having an elongated frame, the
elongated frame supporting an elongate screen, the screen attached to
the frame to form a curved configuration in use;

supporting the frame whereby a user inserts at least a portion of
the frame and screen into shallow water, with the frame oriented so
the elongate screen spans a depth of the water near a bottom of the
shallow water and close to a surface of the water;

maintaining at least a portion of the frame in the water for a
period of time to collect organisms in the water on the screen;

removing the portion of the frame and screen from the water
and inspecting the screen for collected organisms; and

selecting the fishing lure based on the organisms collected;
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Application 10/743,380

wherein the frame has one or more support portions and one or
both of the support portions are embedded in a bed underlying the
water as part of the insertion step.

7. A screening device for determining fishing conditions
comprising:

a) a frame having a pair of side rails and at least two cross
members, the cross members interconnecting the pair of side rails, the
side rails include at least one handle portion and one support portion;

b) a flexible screen having opposing ends and opposing sides,
each opposing side aligned and attached to a respective side rail, at
least one opposing end being a free end and extending between the
pair of side rails, the flexible screen having a width such that the free
end is curved in shape during use.

8. The screening device of claim 7, wherein each cross member
further comprises:

a pair of cross member segments, each segment pivotally
attached to a side rail at one end, other ends of each segment pivotally
attached together so that the cross member segments and side rails can
fold up.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Crane US 1,036,574 Aug. 27, 1912
Flynn US 5,722,196 Mar. 3, 1998

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 4, 7, 9, and 10 are rejected under § 102(b) as being
unpatentable over Flynn.
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flynn.
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Application 10/743,380

3. Claims 8 and 11 are rejected under § 103(a) as being unpatentable
over Flynn in view of Crane.
Rather than reiterate the respective positions advocated by the Appellant
and by the Examiner concerning these rejections, we refer to the Brief and
the Reply Brief and to the Answer respectively for a complete exposition
thereof.
OPINION
35 U.S.C. § 102(b) REJECTION OVER FLYNN
CLAIM 1: METHOD
Appellant’s only argued distinction regarding claim 1 is that Flynn
fails to disclose “[the] support portions of the frame are embedded in a bed
underlying the water as part of the insertion step” (Br. 12). Appellant
contends that laying a “rock or other relatively heavy object on one or both
of said support cross members 40 and/or 42”, as Flynn discloses (col. 5, ll.
46-48), “is not the same as embedding the one or more support portions in a
bed as part of the insertion step of placing the frame into shallow water” (Br.
12).
We agree with the Examiner that claim 1 is anticipated by Flynn’s
disclosure.
In making his rejection, the Examiner states that “. . . a heavy object is
placed on the device which allows for the portion of the device resting on
the waterbed [i.e., stream bed] to be at least partially embedded in the
waterbed [i.e., stream bed]” (Answer 4). The Examiner’s position appears to
be reasonable because, in the normal use of Flynn’s aquatic seine device, the
bottom support structure of the aquatic seine will inherently become
embedded to some extent (e.g., a muddy stream bed would cause a weighted
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Application 10/743,380

seine device to at least partially embed in the mud of the stream bed).
Appellant bears the burden of showing that such apparently-inherent feature
(i.e., embedding) would not actually occur. In re Best, 562 F.2d 1252, 1254-
55, 195 USPQ 430, 433 (CCPA 1977). Appellant has failed to satisfy this
burden.
We further observe that Flynn’s Figure 7 shows his device is inserted
into a stream such that it rests in the stream bed having rocks and a large
rock is placed “. . . on one or both of said support cross members 40 and/or
42” to hold the aquatic seine in place (Flynn, col. 5, ll. 47-48). In such a
support arrangement, it is appropriate to consider the rock(s) on the support
cross member(s) as part of the stream bed, so that the rocks embed the
support cross members (40, 42).
For the above reasons, we sustain the Examiner’s § 102(b) rejection of
argued claim 1 and non-argued claims 2 and 4.

CLAIM 7: DEVICE
Appellant’s only argued distinction is that Flynn fails to disclose “. . .
a flexible screen with its opposing sides aligned and attached to the side rails
. . .” (Br. 16). In that regard, Appellant argues that Flynn attaches flexible
net 52 to the two parallel vertical members 12 and 14 and not L-shaped
horizontal members 16 and 18 (i.e., Flynn’s structure corresponding to
Appellant’s claimed “side rails”) (Br. 13-15).
The Examiner states that flexible net 52 is, at least, indirectly attached
to the L-shaped horizontal members 16 and 18 (i.e., side rails) via the
vertical members 12 and 14 (Answer 7). The Examiner contends that the
claim term “attached” “. . . does not imply . . . [or] require that the flexible
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screen [i.e., flexible net 52] is directly connected via surface to surface
contact with the side rails” (Answer 7).
Appellant counters that “claim [7] calls for the opposing ends of the
screen to be attached to the claimed side rails, not just the screen” (Reply Br.
2). Appellant maintains that the “opposing ends of the screen [i.e., Flynn’s
flexible net 52] are free and unattached” (Reply Br. 2).
We agree with the Examiner that claim 7 is anticipated by Flynn.
Flynn discloses that flexible net 52 is attached to vertical members 12
and 14 (col. 5, ll. 34-36). We note that a first opposing end of Flynn’s
flexible net is attached to vertical member 12 and the second opposing end is
attached to vertical member 14. Flynn discloses that vertical members 12
and 14 are pivotally attached to L-shaped horizontal members 16 and 18
(col. 5, ll. 13-16). Therefore, Flynn’s net is indirectly attached to members
16 and 18, i.e., the side rails.
The attachment limitation of the claim encompasses the indirect
attachment of Flynn. Appellant states in his Specification that, while pivot
pins (13) are shown as attaching the screen (17) to the side rails (1, 3), “other
modes of attachment could be used” (Specification, 12: 3-5). Appellant
provides an example that includes looping the screen end (19) around the
side rails (1, 3) “to form a loop without positive attachment to the [side]
rail[s]” (Specification 12: 5-9). From these disclosures, Appellant plainly
contemplates that “other modes of attachment” include those that attach the
screen (17) to the side rails (1, 3) “without positive [i.e., direct] attachment
to the [side] rail[s]” (Specification 12, 3-9).
From Flynn’s above-noted disclosures and Appellant’s disclosures in
his Specification, the Examiner’s position is reasonable that flexible net 52
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is indirectly attached to L-shaped horizontal members 16 and 18 (i.e., side
rails) via vertical members 12 and 14 and that this form of attaching is
encompassed by the claim language. Moreover, we are unpersuaded by
Appellant’s argument that “opposing ends of the screen [i.e., flexible net 52]
are free and unattached” (Reply Br. 2). Flynn clearly discloses that two
opposing ends of flexible net 52 are attached to vertical members 12 and 14
(col. 5, ll. 34-36).
For the above reasons, we affirm the Examiner’s § 102(b) rejection of
argued claim 7 and non-argued claims 9 and 10.

35 U.S.C. § 103(a) REJECTION OVER FLYNN IN VIEW OF CRANE
CLAIM 8
Appellant argues lack of motivation for combining Crane’s pivotal
connection with Flynn’s single member cross bar (Br. 17). Appellant
contends that Crane does not disclose “each segment has one end pivotally
attached to the side rail with each of the other ends of the segments attached
together” as claim 8 requires (Br. 17). Appellant determines that Crane uses
a “totally different member movement than that contemplated by the
invention and Flynn” (Br. 17).
We cannot sustain the Examiner’s § 103(a) rejection of claim 8 over
Flynn in view of Crane.
Claim 8 requires, in relevant part, that the “other ends of each segment
[be] pivotally attached together so that the cross member segments and side
rails can fold up.” As shown in Appellant’s Figure 1, the cross member
segments 7 and 9 are pivotally connected via pivot pin 24 so that the user
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Application 10/743,380

need only apply pressure to the cross member pivot pin 24 to permit the
screening device to fold up (Specification 8).
Crane does not disclose the above-noted pivotal cross member
arrangement. Rather, Crane discloses a device where spreaders 6 (i.e., cross
members) are pivotally attached to a ferrule 7 (Fig. 1, p. 1, ll. 67-74), not
“together” as the required by claim 8. Moreover, Crane’s device requires
that the ferrule 7 slidably engage shaft 1 to permit the spreaders 6 (i.e., cross
members) to open or close (p. 1, ll. 21-27, 66-77).
Hence, Crane’s device is substantially different in structure and
operation from Flynn’s device, such that there would have been no
motivation, absent impermissible hindsight, for combining Crane’s pivotally
attached spreader 6 (i.e., cross member) with Flynn’s aquatic seine device.
Obviousness can not be established by hindsight combination to produce the
claimed invention. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991).
Accordingly, we reverse the Examiner’s § 103(a) rejection of
dependent claim 8 and dependent claim 11, which depends upon claim 8,
over Flynn in view of Crane.

35 U.S.C. § 103(a) REJECTION OVER FLYNN
Appellant has not argued the § 103(a) rejection of claims 5 and 6 over
Flynn. Accordingly, we summarily affirm the Examiner’s rejection of non-
argued claims 5 and 6.
DECISION
The Examiner’s rejection of claims 1, 2, 4, 7, 9, and 10 under § 102(b)
over Flynn is AFFIRMED.
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Application 10/743,380

The Examiner’s rejection of claims 5 and 6 under § 103(a) over Flynn
is AFFIRMED.
The Examiner’s rejection of claims 8 and 11 under § 103(a) over
Flynn in view of Crane is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED-IN-PART

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