Ex Parte Grimaldi

Board of Patent Appeals and Interferences

Nov 28, 2011

11175769 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/175,769 07/06/2005 Nicholas Louis Grimaldi FL1 4262
7590 11/29/2011
Mitchell D. Bittman
27 London Terrace
New City, NY 10956
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
11/29/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICHOLAS LOUIS GRIMALDI
____________

Appeal 2010-002201
Application 11/175,769
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-8, and 10-12. Claims 9 and 13 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 11/175,769

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The Appellant’s claimed invention pertains to a fishing lure including
a main wire shaft and wire shaft extension, which can be formed from a
single continuous wire, providing strength and ease of manufacture. Spec. 5.
Claims 1 and 11 are independent claims. Br. 7. Claim 1 is illustrative of the
claims on appeal and recites:
1. A fishing lure comprising:
an elongated longitudinally aligned main
wire shaft having a front portion and a rear
portion;
a spinner revolvably supported on the front
portion of the main wire shaft;
a wire shaft extension extending from the
main wire shaft between the front portion and the
rear portion of the main wire shaft at an angle of
about 30 to 60 degrees pointed away from the
spinner effective to provide balance, stability and a
center of gravity for the fishing lure and wherein
the main wire shaft and the wire shaft extension
are formed from a single continuous wire effective
to provide stability, strength and balance to the
fishing lure;
a fishing line attachment loop for attachment
of a fishing line at a front end of the main wire
shaft;
a rear hook attachment loop at a rear end of
the main wire shaft with a rear hook attached
thereto;
a front hook attachment loop at a distal end
of the wire shaft extension with a front hook
attached thereto; and
a creature bait secured to the rear portion of
the main wire shaft by having the main wire shaft
extend through the creature bait.
Claim 11 is a product-by-process claim reciting the “[f]ishing lure of
Claim 10 wherein the fishing lure is formed by . . . .” Thus, claim 11 is
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Application 11/175,769

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limited to the product of claim 10, which contains all limitations of that
claim, as well as all limitations present in claims 1-7, from which claim 10
depends.
The following Examiner’s rejections are before us for review:
1. claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Aagaard (US 973,246, issued Oct. 18, 1910), Linklater (US
2005/0044770 A1, publ. Mar. 3, 2005) and Mehnert (US 2,940,204,
issued June 14, 1960);
2. claims 2-5 under § 103(a) as being unpatentable over
Aagaard, Linklater, Mehnert, and Sparkman (US 4,201,008, issued
May 6, 1980);
3. claim 6 under § 103(a) as being unpatentable over Aagaard,
Linklater, Mehnert, Sparkman, and Gautsche (US 2,611,984, issued
Sept. 30, 1952); and
4. claims 7, 8 and 10-12 under § 103(a) as being unpatentable
over Aagaard, Linklater, Mehnert, Sparkman, Gautsche and Worden
(US 2,435,730, issued Feb. 10, 1948).

The combined teachings of Aagaard, Linklater, and Mehnert are not
reasonably combined with respect to Claim 1
Aagaard discloses a fishing hook relating to a live or artificial bait
holding device, including a hook 8, a spinner 6, and a clasp 7. Aagaard, p. 1,
ll. 8-12, 59, 60. The clasp 7 is formed of a single piece of wire and includes
two parallel members 12, 13. Aagaard, p. 1, ll. 70-75. The single piece of
wire also forms eyes 18, loop 20, and vertical portions 21. Members 12, 13,
eyes 18, and vertical portions 21 form clamping jaws adapted to securely
engage bait 15. Aagaard, p. 1, ll. 70-102; see Figures 1-2.
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Application 11/175,769

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The Examiner finds Aagaard discloses “an elongated longitudinally
aligned main wire shaft” via clasp 7 and a wire shaft extension “extending
from the main wire shaft between the front portion and the rear portion of
the main wire shaft at an acute angle pointed away from the spinner” via two
parallel members 12, 13, eyes 18, loop 20, and vertical portions 21. Ans. 3.
The Examiner also finds that Aagaard does not disclose “a creature bait
secured to the rear portion of the main wire shaft by having the main wire
shaft extend through the creature bait” as recited in claim 1. Ans. 4.
The Examiner relies on Linklater to remedy Aagaard’s deficiency
with respect to claim 1. The Examiner finds Linklater discloses a lure shaft
40 that extends through lure bait 140.1 Ans. 4. Linklater discloses lure bait
140 is skewered on the lure shaft 40 and secured into barrel 130 of ferrule
110. Linklater, para. [0014]. The Examiner concludes “it would have been
obvious to one of ordinary skill in the art to take the device of Aagaard and
add the main wire shaft extending through the creature bait of Linklater, so
as to allow for the creature bait to be securely held in place during use.”
Ans. 4 (italics added). Thus, the Examiner modifies the fishing hook of
Aagaard by further adding Linklater’s skewering shaft 140. It is notable that
Aagaard’s clamping jaws provide the same function as Linklater’s
skewering shaft 140, i.e. both structures secure bait in place. Thus, the

1 The Examiner finds “main wire shaft - at 12, extends through the creature
bait - at 11 - see figures 1-2.” Linklater’s description does not provide
element numbers for 11 and 12. However, Linklater’s element number 11 in
Figure 1 points to the same part as element number 140 in Figure 2. In
Figure 2, element number 140 is lure bait. Linklater, para. [0014].
Linklater’s element number 12 in Figure 1 points to the same part as element
number 40 in Figure 2. In Figure 2, element number 40 is a lure shaft. Id.
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Application 11/175,769

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addition of Linklater’s skewering shaft 140 to Aagaard’s fish hook is
redundant.
The Appellant contends one of ordinary skill in the art would not add
the skewering shaft of Linklater to the fishing hook of Aagaard. See Br. 15-
16. The Appellant contends that if Aagaard’s fish hook was modified as
suggested by the Examiner, then what the Examiner refers to as the wire
shaft extension, i.e. 13, 14, 18, 20, and 21, would be no longer be needed
and thus eliminated. Br. 16. The Appellant also contends that one of
ordinary skill in the art would not eliminate the primary feature of Aagaard
by adding Linklater’s skewering shaft 140 because doing so would change
the basic design and primary feature of Aagaard’s lure. Br. 15-16. The
Appellant’s contentions are reasonable because the Examiner has not
provided a rationale as to why one of ordinary skill in the art would add a
second bait securing device to Aagaard’s fishing hook.
The Appellant’s contentions are persuasive. Put simply, the
Examiner’s conclusion of obviousness does not reasonably articulate how
the addition of Linklater’s securing means to Aagaard’s fishing hook results
in the inclusion of Linklater’s securing means as well as the preservation of
Aagaard’s clasping jaws. The Examiner does not rebut this argument. See
Ans. 8-10.
The Examiner turns to Mehnert’s disclosure to remedy other
deficiencies of Aagaard with respect to claim 1. The Examiner finds that
Mehnert discloses a line fastening loop 42 and a spinner 11 revolvably
supported on the front portion of a wire-like cylindrical shaft 10. See Ans. 4,
9-10; Mehnert, col. 3, ll. 24-30, and col. 5, ll. 1-3. The Examiner’s findings
specific to Mehnert do not remedy the deficiency of the combined teachings
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of Aagaard and Linklater as pointed out above. Thus, we do not sustain the
rejection of claim 1.
The disclosures of Sparkman, Gautsche and Worden do not remedy the
deficiencies of the combined teachings of Aagaard, Linklater, and Mehnert
with respect to Claim 1
The Examiner finds that Sparkman discloses a spinner substantially
corresponding to the spinner as recited in claim 2. Ans. 5-6. As for claims
3-5, the Examiner makes further findings as to how Aagaard as modified by
Linklater, Mehnert, and Sparkman corresponds to claims 3-5. Ans. 6. As
for claim 6, the Examiner finds that Gautsche discloses a split ring 18, 29
used to attach a hook. Ans. 6-7. As for claim 7, the Examiner finds that
Worden discloses a corrugated surface at the rear portion of a main shaft to
securely hold bait. Ans. 7. As for claims 8 and 10, the Examiner makes
further findings as to how Aagaard as modified by Linklater, Mehnert,
Sparkman, Gautsche and Worden corresponds to claims 8 and 10. Id.
However, none of the above findings remedy the deficiencies as pointed out
in connection with the rejection of independent claim 1. As such, we do not
sustain the Examiner’s rejection of claims 2-8, and 10.
Turning to product-by-process claim 11, which includes the formation
of the fishing lure as recited in claim 10, because we do not sustain the
Examiner’s rejection of claim 10 we also do not sustain the Examiner’s
rejection of claim 11. Additionally, we do not sustain the rejection of
dependent claim 12 for the same reason as claim 11.

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Application 11/175,769

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DECISION
We REVERSE the Examiner’s decision finally rejecting claims 1-8,
and 10-12.

REVERSED

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