Ex Parte Herrick

Board of Patent Appeals and Interferences

Aug 8, 2011

11121396 (B.P.A.I. Aug. 8, 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.
11/121,396 05/03/2005 Michael F. Herrick MFH-PFJ-2 4040
23165 7590 08/09/2011
ROBERT J JACOBSON PA
650 BRIMHALL STREET SOUTH
ST PAUL, MN 551161511
EXAMINER
SMITH, KIMBERLY S
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
08/09/2011 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 MICHAEL F. HERRICK
____________________

Appeal 2009-010374
Application 11/121,396
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010374
Application 11/121,396

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STATEMENT OF THE CASE
Michael F. Herrick (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 18 and 21-30. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a fishing jig having a
plastic body, wherein the plastic body is solid up to the surfaces such that the
plastic of the plastic body includes no voids (Spec. 3:26-32).
Claim 18, reproduced below, is representative of the subject matter on
appeal.
18. A fishing implement, comprising:
a) a plastic body;
b) hardware in the plastic body, with the hardware
including a battery in said plastic body; a light source structure
in said plastic body; and an electrical lead arrangement at least
partially in said plastic body and electrically engaged to the
battery and light source structure, with the electrical lead
arrangement having exposed portions, with said exposed
portions being out of the plastic body such that, when water is
present between said exposed portions, a circuit is completed
between the battery and light source structure such that a light
source of the light source structure can emit light; and
c) with the plastic body being over and around and solid
up to the surfaces of the hardware such that the plastic body is
solid over three dimensions from end to end, from side to side,
and from front to back, such that plastic of the plastic body
includes no voids, with the plastic body being one-piece and
integral.

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Application 11/121,396

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THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 18 and 21-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Livingston (US 5,157,857, issued Oct. 27, 1992) in view
of Troescher (US 5,195,266, issued Mar. 23, 1993).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Livingston and Troescher would have led a
person having ordinary skill in the art to a plastic body being solid up to the
surfaces of the hardware, wherein the plastic body is solid over three
dimensions, and the plastic of the plastic body includes no voids, as called
for in independent claims 18 and 29 (App. Br. 14)1.

ANALYSIS
Appellant contends that since Livingston and Troescher describe
bodies having voids, the combined teachings of Livingston and Troescher do
not describe a plastic body, which is solid over three dimensions and
includes no voids, as called for in independent claims 18 and 29 (App. Br.
10, 13, 15-16).
The Examiner found that (1) “[t]he disclosure of Livingston may lead
one to assume that the enclosed body as per Figures 3 and 4 are not inclusive
of voids” (Ans. 6), (2) “Troescher clearly teaches at column 1, lines 60-63
that the space within a fishing lure can be filled with epoxy to maintain a

1 All references to the Appeal Brief (App. Br.) in this decision are to the
Appeal Brief filed July 11, 2008.
Appeal 2009-010374
Application 11/121,396

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fixed relation between components and to electrically insulate them” (Ans.
7), and (3) “Troescher positively states the filling of voids in a fishing lure
insulates and affixes components therein” (id.).
The Examiner further found the following:
The Troescher reference clearly teaches that filling voids within
a fishing lure electrically insulates and secures the components
of the lure. As such, one would find it obvious to fill any voids
that may be present in the Livingston reference so as to
electrically insulate and secure the components of the lure.
Therefore, the combination of the Livingston reference with
any possible voids filled as per the teaching of Troescher would
provide the plastic body being solid up to the surfaces of the
hardware.
(Ans. 7-8).
Livingston describes that “FIGS. 9-11 . . . show lure 71 in accordance
with the invention” (col. 4, ll. 1-2) (emphasis added). Livingston’s Figure 11
shows voids between the plastic body 74 and the internal components, e.g.,
circuit board 82.
Since Livingston describes that Figures 9-11 are in accordance with
the invention and Figure 11 shows voids, we find that a person having
ordinary skill would not assume that Livingston’s enclosed body shown in
Figures 3 and 4 is not inclusive of voids, as the Examiner would like us to
find (Ans. 6). Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991) (“To serve as an anticipation when the reference is silent
about the asserted inherent characteristic, such gap in the reference may be
filled with recourse to extrinsic evidence. Such evidence must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference.”)
Troescher describes that
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The space between the outer circumferential wall surface of
sleeve 20 and the inner circumferential wall surface of sleeve
18 is filled with epoxy to maintain a fixed relation between
these sleeves and to electrically insulate them from each other.
(col. 1, ll. 57-62).
We agree with Appellant that Figure 1 of Troescher shows voids,
denoted by Appellant as V1, V2 and V3 in an annotated Figure 1 of
Troescher on page 12 of the Appeal Brief.
Thus, while Troescher teaches that the space between the walls is
filled with epoxy to maintain a fixed relation between the sleeves, Troescher
does not describe that all of the space between the walls is filled with epoxy
to eliminate any voids therebetween.
We conclude that it would not have been obvious to fill any voids that
may be present in Livingston in view of the teaching of using epoxy to
electrically insulate and secure the components of the lure as taught by
Troescher.
Thus, we conclude that the combined teachings of Livingston and
Troescher do not describe a plastic body, which is solid over three
dimensions and includes no voids, as called for in independent claims 18 and
29. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”)
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We reverse the rejection of independent claims 18 and 29, and
dependent claims 21-28 and 30.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Livingston and Troescher would have led a person having ordinary skill in
the art to a plastic body being solid up to the surfaces of the hardware,
wherein the plastic body is solid over three dimensions, and the plastic of the
plastic body includes no voids, as called for in independent claims 18 and
29.

DECISION
The decision of the Examiner to reject claims 18 and 21-30 is
reversed.

REVERSED

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