Ex Parte Clark

Board of Patent Appeals and Interferences

Sep 25, 2003

10116937 (B.P.A.I. Sep. 25, 2003)

The opinion in support of the decision being entered today was
not written for publication in a law journal and is not binding
precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHAEL R. CLARK

Appeal No. 2003-1552
Application No. 10/116,937

ON BRIEF

Before OWENS, TIMM, and DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 21, 27-29,
32 and 33, and refusal to allow claims 24, 25, 30 and 31 as
amended after final rejection. Claims 22, 23 and 26 have been
allowed, and the rejections of claims 32 and 33 are withdrawn in
the examiner’s answer (page 3).
Appeal No. 2003-1552
Serial No. 10/116,937
2
THE INVENTION
The appellant claims a fishing lure having air bubbles
encapsulated in a solid plastic body. Claims 21 and 27 are
illustrative:
21. A fishing lure body consisting essentially of soft,
flexible, solid plastic having a plurality of air bubbles
encapsulated therewithin, said encapsulated air bubbles occurring
only at preselected locations that are spaced along a preselected
length of said solid plastic body, and said solid plastic body
being devoid of air bubbles except at said preselected spaced
locations.
27. A fishing lure comprising a soft, flexible body of only
solid plastic, a plurality of air bubbles encapsulated entirely
within said solid plastic body, said air bubbles being
encapsulated within said solid plastic body only at predetermined
locations that are spaced along a longitudinal axis of said solid
plastic body, and said solid plastic body being devoid of any
randomly dispersed encapsulated air bubbles.
THE REFERENCES
Lindgard 4,732,766 Mar. 22, 1988
Kato 5,667,739 Sep. 16, 1997
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 102(b) as
follows: claims 21, 24, 25, 27, 30 and 31 over Kato, and
claims 27-31 over Lindgard.
OPINION
We reverse the aforementioned rejections. We need to
address only the independent claims, i.e., claims 21 and 27.
Appeal No. 2003-1552
Serial No. 10/116,937
3
“Anticipation requires that every limitation of the claim in
issue be disclosed, either expressly or under principles of
inherency, in a single prior art reference.” Corning Glass Works
v. Sumitomo Electric, 868 F.2d 1251, 1255-56, 9 USPQ2d 1962, 1965
(Fed. Cir. 1989).
Rejection over Kato
Claim 21
Kato discloses a fishing lure body (10) which can be made of
plastic and has a large number of air bubbles sealed therein
(col. 2, lines 63-67; col. 3, lines 5-8). The body has a
cavity (12) to enhance its flexibility (col. 2, line 67 - col. 3,
line 1).
The appellant’s claim 21 requires a solid plastic body. The
examiner argues that Kato’s figure 2 shows a solid body wall
containing encapsulated air bubbles, and that this solid body
wall and the appellant’s solid body, both of which contain air
bubbles, are equally solid (answer, page 4).
The appellant’s claim 21, however, does not require a solid
body wall but, rather, requires a solid body. The relevant
dictionary definition of “solid” is “not hollowed out” (reply
brief, page 1). The appellant’s specification does not indicate
that the appellant gives the word “solid” a meaning which is
inconsistent with this definition.
Appeal No. 2003-1552
Serial No. 10/116,937
1 In a disclosure not relied upon by the examiner, Kato
states (col. 4, lines 31-36): “In the illustrated embodiment, the
artificial bait main body 10 is formed by use of the above-
mentioned core metal 24. However, this is not limitative but
other methods are also available. For example, the artificial
bait main body can be formed by pouring a paste-like unformed
material into a metal mold.” Kato does not disclose a mold
configured such that it produces a solid body, e.g., one not
having a cavity portion, and is silent as to encapsulated air
bubbles in the body.
4
Kato’s cavity-containing fishing lure body is not a solid
body.1 Hence, the examiner has not established that Kato
anticipates the fishing lure body claimed in the appellant’s
claim 21. Accordingly, we reverse the rejection over Kato of
claim 21 and dependent claims 24 and 25.
Claim 27
The appellant’s claim 27, like claim 21, requires that the
claimed fishing lure has a solid plastic body. As discussed
above regarding the rejection of claim 21, the examiner has not
established that Kato discloses this claim feature.
In addition, claim 27 requires that the solid plastic body
is devoid of any randomly dispersed encapsulated air bubbles.
Kato discloses making his fishing lure by 1) dipping a core
metal (24) into a bath of paste-like coating material, which can
be plastic and which contains air bubbles provided by a stirrer
or tropical fish tank oxygen supply, such that air bubble-
containing coating material adheres to the core metal,
Appeal No. 2003-1552
Serial No. 10/116,937
5
2) solidifying the coating material, thereby entrapping the air
bubbles, and then 3) removing the core metal to provide a fishing
lure having, where the core metal used to be, a cavity portion
(col. 3, lines 24-37; col. 4, lines 9-13 and 43-49). The
entrapped air bubbles, therefore, appear to be randomly
dispersed.
The examiner argues that the distribution of Kato’s bubbles
is not random because the stirrer or tropical fish tank oxygen
supply used to form the bubbles is under the direct control of
the maker of the lure body (answer, page 6). This argument is
not well taken because the examiner has not established that any
such direct control produces a non-random bubble distribution.
The examiner argues that Kato’s teaching that “no air bubble
is present in the outer peripheral portion thereof but air
bubbles 14 are surely sealed in the artificial bait main body 10"
(col. 3, lines 19-21) “reinforces the idea that Kato is
controlling the bubble distribution within the body” (answer,
page 4). This argument is not convincing because the examiner
has not established that the absence of air bubbles in the outer
peripheral portion is the result of anything other than random
bubble formation.
The examiner argues that “the act of dipping the core
metal 24 of Kato into the unformed material 10A’ with bubbles
Appeal No. 2003-1552
Serial No. 10/116,937
6
therein is an act of preselecting and controlling the
distribution of bubbles since the exact level at which the core
metal 24 is dipped determines the ultimate bubble distribution
along the lure body” (answer, pages 4-5). The depth to which the
core metal is dipped determines the length of the bait, but the
examiner has not provided evidence or reasoning which shows that
the dipping depth determines the bubble distribution along that
length.
The examiner argues that “having the lower end of the core
metal 24 immersed in the material 10A’ would occur at a longer
duration since it is the first portion to enter the material 10A’
and would thus have greater bubble formation than what occurs at
the higher end of the core metal 24 during the dipping process
and would also lend to the idea that the bubble formation is
controlled” (answer, page 5). This argument is not persuasive
because it is mere speculation.
For the above reasons we find that the examiner has not
carried the burden of establishing a prima facie case of
anticipation by Kato of the fishing lure claimed in the
appellant’s claim 27. We therefore reverse the rejection of this
claim and dependent claims 28-30 over Kato.
Appeal No. 2003-1552
Serial No. 10/116,937
7
Rejection over Lindgard
Lindgard discloses a fishing bait made by impregnating a
resilient, nonwoven, long staple, multifilament polyester web,
commercially available as insulation, with bread batter and then
baking the batter to form bread (col. 2, lines 4-7; col. 4,
lines 37-68). The “bait contains gas bubbles, as cavities, just
as ordinary bread” (col. 2, lines 20-21).
The examiner argues that the appellant’s “comprising”
transition term does not exclude Lindgard’s bread (answer,
pages 7-8). Even if the appellant’s claim 27 does not exclude
bread, Lindgard’s plastic fiber insulation web is not a solid
plastic body and does not encapsulate the gas bubbles in the
bread.
The examiner argues that “the bubbles of Lindgard are not
randomly dispersed or the result of a random act, since they
directly result from the method of making the bait performed by
the user to place them within the bait in the first place so as
to provide buoyancy to the bait” (answer page 8). Although
Lindgard chose the method for forming the bubbles, i.e., baking
bread batter, the chosen method forms bubbles which are randomly
dispersed. Hence, the examiner’s argument is incorrect.
For the above reasons we reverse the rejection over
Lindgard.
Appeal No. 2003-1552
Serial No. 10/116,937
8
DECISION
The rejections under 35 U.S.C. § 102(b) of claims 21, 24,
25, 27, 30 and 31 over Kato, and claims 27-31 over Lindgard, are
reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TJO/dal
Appeal No. 2003-1552
Serial No. 10/116,937
9
CHARLES M. KAPLAN
Patent Attorney
30 N. Nanagosa Trail
Suttons Bay MI 49682